Ex parte White et al.

Board of Patent Appeals and Interferences

Jul 21, 1999

08138300 (B.P.A.I. Jul. 21, 1999)

Application for patent filed October 18, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID J. BRENNAN,
JERRY E. WHITE, and DARYL R. CALHOUN
__________
Appeal No. 96-2827
Application 08/138,3001
__________
ON BRIEF
__________
Before GARRIS, WALTZ, and LIEBERMAN, Administrative Patent
Judges.
LIEBERMAN, Administrative Patent Judge.
Appeal No. 96-2827
Application No. 08/138,300
No amendments under 37 CFR § 1.116 were filed by2
appellants. However, claim 15, as it appears in Appendix A,
is incorrect. An amendment is required to change the
dependency from “15” to “14”. See Brief, page 2. There is no
amendment of record.
2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final
rejection of claims 1 and 3 through 15, which are all the
claims in the application.2
THE INVENTION
Appellants’ invention is directed to a thermoplastic
composite containing a hydroxy-phenoxy polyether and
reinforcing fibers. A further embodiment is drawn to a
process of making a thermoplastic composite by applying a
hydroxy-phenoxy polyether onto a surface of reinforcing
fibers.
THE CLAIMS
Claims 1 and 8 are illustrative of appellants’ invention
and are reproduced below.
1. A thermoplastic composite comprising reinforcing
fibers and a hydroxy-phenoxyether polymer matrix.
Appeal No. 96-2827
Application No. 08/138,300
3
8. A process for making a thermoplastic composite which
comprises applying a hydroxy-phenoxyether polymer onto the
surface of reinforcing fibers.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the
following references of record.
Harpell et al. 4,501,856 Feb. 26, 1985
(Harpell)
Wolfe et al. 4,533,693 Aug. 6, 1985
(Wolfe)
Gardner et al. 4,608,404 Aug. 26, 1986
(Gardner)
Brennan et al. 5,218,075 Jun. 8, 1993
(Brennan)
THE REJECTIONS
Claims 1 and 3 through 15 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Gardner in view of Harpell.
Claims 1 and 3 through 15 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Brennan in view of Gardner and
Wolfe.
OPINION
Appeal No. 96-2827
Application No. 08/138,300
4
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejections are not well
founded for essentially the reasons expressed by appellants in
their Brief, and we add the following primarily for emphasis.
Accordingly, we will not sustain the rejections.
In the first rejection, the primary reference to Gardner
discloses a composition containing both thermoplastic polymer
and a structural fiber. See column 2, lines 3-9. Moreover,
the thermoplastic polymer is exemplified by a thermoplastic
hydroxy phenoxy ether. See column 9, lines 35-67 and column
12, lines 14-22. However, the claimed subject matter requires
that the composite be “thermoplastic.” In contrast, we find
the composite of Gardner thermosetting. Two required
components of Gardner’s invention are an epoxy resin and a
hardener. The interaction of the epoxy resin and hardener
necessarily results in a thermosetting resin matrix. See
Example 14 wherein phenoxy resin is present and the
composition is thermosetting. Furthermore, Examples 6-25
among others are thermosetting or cured. In this respect, we
agree with appellants statement in the Brief that the,
Appeal No. 96-2827
Application No. 08/138,300
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“addition of a thermoplastic to a thermoset epoxy system will
not yield a thermoplastic matrix.” See Brief, page 4.
Accordingly, although Gardner may optionally contain a
thermoplastic polymer including a hydroxy-phenoxy ether and a
structural fiber, as required by the claimed subject matter,
the indispensable presence of the epoxy resin and hardener
results in a crosslinked thermoset composite. We conclude
that the examiner has not established, on this record, that
the presence of the claimed components in addition to an epoxy
resin and a hardener results in a thermoplastic composite.
Accordingly, we reverse.
We turn next to the rejection of the claims over Brennan
in view of Gardner and Wolfe. The primary reference to
Brennan teaches that the claimed hydroxy-phenoxy ether polymer
can be used in the form of a molded container, an impermeable
film, a coating, an interlayer of a laminate or a coextruded
container. See column 2, lines 13-16. However, we find no
disclosure or suggestion that the hydroxy-phenoxy ether
polymer of Brennan can be reinforced with fibers.
Wolfe discloses high strength fibers formed from
heterocyclic nitrogen containing polymers and suggests that
Appeal No. 96-2827
Application No. 08/138,300
6
they may be added to a resinous matrix. See column 85, lines
2-3, and claims 339 and 343. However, we find no disclosure
or suggestion that the fibers of Wolfe may be used with a
hydroxy-phenoxy ether polymer.
The other reference to Gardner discussed supra suggests
thermosetting composites prepared in the presence of an epoxy
resin and a hardener. Accordingly, while the components of
the claimed subject matter are each known individually or in
combination with thermosetting components, on the record
before us the examiner has not established any motivation or
reason for combining the hydroxy-phenoxy polyether and the
reinforcing fibers of the claimed subject matter or of the
manner of making the thermoplastic composite as claimed.
Based upon the above analysis, we have determined that
the examiner’s legal conclusion of obviousness is not
supported by the facts. “Where the legal conclusion [of
obviousness] is not supported by facts it cannot stand.” In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
DECISION
The rejection of claims 1 and 3 through 15 under 35
U.S.C.
Appeal No. 96-2827
Application No. 08/138,300
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§ 103 as unpatentable over Gardner in view of Harpell is
reversed.
The rejection of claims 1 and 3 through 15 under 35
U.S.C.
§ 103 as unpatentable over Brennan in view of Gardner and
Wolfe is reversed.
The decision of the examiner is reversed.
REVERSED
Appeal No. 96-2827
Application No. 08/138,300
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Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Thomas A. Waltz ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Paul Lieberman )
Administrative Patent Judge )
tdc
Appeal No. 96-2827
Application No. 08/138,300
9
Richard G. Waterman
P.O. Box 1967
Midland, MI 48641-1967