Ex Parte Uhm et al

Board of Patent Appeals and Interferences

Dec 30, 2008

10734029 (B.P.A.I. Dec. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAEWON UHM,
LESLIE HORTON,
AVI DESAI, WILLIAM BITTLE,
CHUCK FORD,
and BETTY ROBERTS
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Appeal 2008-6060
Application 10/734,029
Technology Center 1700
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Decided: December 30, 2008
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Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-6 and 8-18.
Claim 1 is illustrative:
1. A wet lay process for preparing a glass fiber mat comprising the
steps of:
Appeal 2008-6060
Application 10/734,029

(a) sizing glass fibers with a sizing composition which includes a
partially amidated polyalkylene imine cationic lubricant;

(b) separating said sized glass fibers by immersing said sized glass
fibers in an aqueous dispersant medium that includes an emulsifier, whereby
a slurry is formed;

(c) agitating said slurry causing said emulsifier to generate entrained
air, said agitating causing the separation of the glass fibers into individual
strands;

(d) collecting the individual sized glass fibers on an endless moving
conveyor;

(e) drying said individual sized glass fibers as the individual sized
glass fibers move on the endless moving conveyor;

(f) contacting said dried, sized glass fibers with a thermosetting
binding resin; and

(g) curing said thermosetting resin whereby a glass fiber mat is
formed.

The Examiner relies upon the following references as evidence of
obviousness:
Tiesler US 4,957,559 Sep. 18, 1990
Vanderhoff US 5,106,903 Apr. 21, 1992
Mirous US 5,518,586 May 21, 1996
Sage US 6,228,281 B1 May 8, 2001
Jaffee US 6,432,482 B1 Aug. 13, 2002

“HydroFormer™, "Datasheet [online],Voith Paper, [Retrieved on Jan. 3,
2007 (Internet: URL: hppt://www.hydroformer.com/dnd_1.html.

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“Deltaformer™, "Datasheet [on line], Glens Falls Interweb, Inc., 2002
(Retrieved Jan. 3, 2007), (Internet: URL:http//web.archieve.org/web/-
20020609105744/http://gfinetweweb.com/deltaformer.ht.ml.

Appellants' claimed invention is directed to a wet lay process for
preparing a glass fiber mat. The process entails, inter alia, sizing glass fibers
with a sizing composition which includes a partially amidated polyalklyene
imine cationic lubricant.
Appealed claims 1-6 and 8-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mirous in view of Sage and Jaffee.
Appellants have not separately argued any particular claim on appeal.
Accordingly, all the appealed claims stand or fall with claim 1.
We have thoroughly reviewed each of the arguments advanced by
Appellants. However, we are in complete agreement with the Examiner's
reasoned analysis and application of the prior art, as well as his cogent and
thorough disposition of the arguments raised by Appellants. Accordingly,
we will adopt the Examiner's reasoning as our own in sustaining the
rejection of record, and we add the following for emphasis only.
Appellants do not dispute that Mirous, like Appellants, discloses a wet
lay process for forming a glass fiber mat including the steps of adding glass
fiber bundles to an aqueous dispersant medium and forming a "white water"
slurry of fibers under agitation wherein the medium may contain a lubricant
and a dispersant. Mirous does not disclose a particular lubricant, such as
Appellants' amidated polyalkylene imine cationic lubricant. However, as set
forth by the Examiner, Sage discloses treating glass fibers with a sizing
composition that may comprise the presently claimed lubricant. The
Examiner points out that "Sage further teaches that the size coating reduces
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Application 10/734,029

fuzz and improves processing properties of the fibers, such as fiber bundle
cohesion, spreadability, fiber smoothness and softness, abrasion resistance
and ease in unwinding the fiber bundles [and protecting] the fibers from
damage during handling (col. 2, ll. 10-32)" (Ans. 8, third para.).
Accordingly, based on the combined teachings of Mirous and Sage, we find
no error in the Examiner's legal conclusion that it would have been obvious
for one of ordinary skill in the art to select the presently claimed lubricant,
disclosed by Sage, in the process of Mirous for making a glass fiber mat.
We agree with the Examiner that one of ordinary skill in the art would have
had the requisite reasonable expectation of successfully using the claimed
lubricant to size the glass fibers of Mirous.
Appellants contend that "Sage does not teach fibers for a glass mat"
(Br. 11, second para.). Appellants cite column 6, lines 54-64 of Sage for
various uses of Sage's sized glass fibers that does not include making a glass
mat. However, as noted by the Examiner, Sage expressly discloses that
"glass fibers, as well as woven and non-woven fabrics, meshes and scrims
have been added to the thermosetting polymer matrices for use in pultrusion,
filament-winding, spray-up, sheet molding and bulk molding operations"
(col. 1, ll. 24-28). Consequently, we, like the Examiner, are convinced that
one of ordinary skill in the art would have interpreted Sage as teaching that
the sized, lubricant-treated glass fibers can be used to make glass fiber mats.
Appellants cite Examples 1-6 in Table 1 of the present Specification
for showing that sizing compositions of the present invention eliminate the
storing of wet glass fibers in order to dry them sufficiently. However,
Appellants have not refuted the valid criticisms of the comparative data
lodged at pages 9-10 of the Answer. Specifically, the Examiner points out
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that "[t]he typical cationic lubricant from prior art is not specified and it
cannot be determined if the lubricant corresponds to any of the cited prior
art" (Ans. 9, second para.). The Examiner also points out that the specific
concentration used for the comparative example is not known and "the
amount of the sizing ingredients retained on the fibers is unknown" (id.).
The Examiner further criticizes the Specification data on the basis that the
composition for Specification Example 1 comprises partially amidated
polyalkylene amine, the table on page 10 lists a partially amidated
polyalkylene imide whereas the claims recite a partially amidated
polyalkylene imine. The Examiner explains that "[a]n amine, an imide and
an imine represent three different chemical species [ergo] [t]he examples do
not appear to provide any support for the claimed lubricant" (Ans. 9, third
para.).
Appellants further maintain that although Mirous uses a water
insoluble anionic binder, "claims 1 and 11 do not recite, nor require the use
of an anionic binder" (Br. 13, second para.). However, as explained by the
Examiner, "[t]he open language of the instant claims does not preclude
additional ingredients, such as the disclosed anionic phosphate ester (of
Mirous)]" (Ans. 11, first para.). We note that the claim language
"comprising" does not preclude the use of an anionic binder in the process
for preparing a glass fiber mat.
As a final point, we observe that although Appellants cite
Specification data, Appellants make no assertion that the present record
includes objective evidence of unexpected results.
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In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims 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

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ATTN: WILLIAM J. DAVIS, ESQ.
GAF MATERIALS CORPORATION
LEGAL DEPARTMENT BLDG No. 10
1361 ALPS ROAD
WAYNE, NJ 07470

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