Ex Parte Wilson

Board of Patent Appeals and Interferences

Sep 15, 2006

09896439 (B.P.A.I. Sep. 15, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENNETH P. WILSON
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Appeal 2006-2160
Application 09/896,439
Technology Center 1700
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Decided: September 15, 2006
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Before GARRIS, WALTZ, and FRANKLIN, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Primary Examiner’s refusal to
allow claims 1 through 20, which are the only claims pending in this
application, as amended subsequent to the Final Rejection (see the
Amendment dated Aug. 3, 2004, entered as per the Advisory Action dated
Sep. 9, 2004; Br. 2-3).1 We have jurisdiction pursuant to 35 U.S.C. § 134.

1 We refer to and cite from the “Supplemental Appeal Brief” dated Sep. 16,
2005.
Appeal 2006-2160
Application 09/896,439

According to Appellant, the invention is directed to a method of
insulating or thermally protecting a rocket motor assembly, where a
precursor of a rocket motor ablative material is formed from at least one
aromatic polyamide in the form of a yarn having a denier per fiber of 1.5 to
3.0 (Br. 3). The structure formed from the precursor material is carbonized
to form a reinforcement structure, which structure is then impregnated with a
resin to form the rocket ablative material (id.). Claim 1 on appeal is
illustrative of the invention and is reproduced below:

A method for insulating or thermally protecting a rocket motor
assembly, comprising:
providing a precursor material comprising at least one aromatic
polyamide, the precursor
material having a denier per fiber ranging from 1.5. denier per
fiber to 3.0 denier per fiber; carbonizing the precursor material to
form a reinforcement structure;
impregnating the reinforcement structure with a resin matrix to form a
rocket motor ablative material; and
using the rocket motor ablative material on a portion of a rocket motor
assembly.

In addition to Appellant’s admitted prior art (APA), the Examiner has
relied upon the following references as evidence of obviousness:
Lambdin US 3,573,086 Mar. 30, 1971
Hirsch US 3,576,769 Apr. 27, 1971
Binning US 3,699,210 Oct. 17, 1972
Claims 1-6 and 13-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the APA in view of Binning and Lambdin (Answer 3).
Claims 7-12 and 16-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the APA in view of Binning, Lambdin, and Hirsch
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Appeal 2006-2160
Application 09/896,439

(Answer 4).2 Based on the totality of the record, we AFFIRM all rejections
on appeal essentially for those reasons stated in the Answer, as well as those
reasons set forth below. We refer to the Brief and the Answer for a
complete exposition of the countervailing arguments for and against
patentability.
OPINION
A. The Rejections over the APA, Binning and Lambdin
The Examiner finds that the admitted prior art discussed on pages 1-3
of the Specification discloses carbonizing a viscose rayon woven mat,
impregnating it with a resin, and lining the interior of a rocket nozzle with
the impregnated material to act as an ablative material (Answer 3). The
Examiner further finds that it was known in the admitted prior art that the
precursor viscose rayon woven mat was no longer available (id.). The
Examiner finds that Binning discloses carbonizing a polyaramide fiber mat,
combining it with a resin, and using this material in nose cones or rocket
nozzle exhausts (id.). The Examiner also finds that Binning teaches that
rayon is a less preferred fiber to use in this environment (id.). From these
findings, the Examiner concludes that it would have been obvious to one of
ordinary skill in this art at the time of Appellant’s invention to replace the
unavailable rayon of the admitted prior art with the preferred polyaramide of

2 The Examiner also repeats two other rejections (Answer 6, 7). However,
as noted by Appellant (Br. 14-15), these rejections are essentially the same
as the above cited rejections, involving the same claims, the same issues, but
merely reversing the order of two references. Therefore, in the interest of
judicial economy, we consider the two above cited rejections with our
remarks equally applying to the remaining rejections on pages 6 and 7 of the
Answer.
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Appeal 2006-2160
Application 09/896,439

Binning for use as ablative material in rocket nozzle environments (id.). We
agree.
The Examiner recognizes that the APA and Binning are silent as to
the denier of the fibers used to form the reinforcement structure (Answer 3).
The Examiner applies Lambdin for the teaching of making carbonized
impregnated fiber composites from rayon to be used in rocket nozzles,
where the denier of the fiber is about 2.3 (id.). The Examiner concludes that
it would have been obvious to one of ordinary skill in this art to use any
conventional size fiber, and cites Lambdin as evidence that 2.3 denier fibers
have previously been employed in carbonized impregnated fiber composites
useful in rocket nozzles (Answer 3-4). We agree.
Appellant argues that the Examiner’s proposed motivation to combine
references is improper (Br. 6, 8). Specifically, Appellant argues that the fact
that rayon is no longer available does not provide the requisite motivation to
use aromatic polyamide as the alternative to rayon (Br. 8). We disagree.
We determine that the fact that rayon is no longer available would have
provided the motivation to one of ordinary skill in this art to seek alternative
materials that provide the same or similar properties. Thus one of ordinary
skill in this art would have been led to Binning, who discloses an alternative
aromatic polyamide precursor material used with resins to produce plastic
composites with satisfactory physical properties to be useful in rocket nose
cones and exhaust nozzles (col. 2, ll. 34-41; and col. 3, ll. 17-20).
Furthermore, we determine that the fact that rayon is taught by Binning as a
less preferred fiber starting material (col. 3, ll. 22-30) would have also
motivated one of ordinary skill in this art to use the aromatic polyamide
starting material of Binning as a substitute for the rayon of the APA.
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Appeal 2006-2160
Application 09/896,439

Appellant argues that Lambdin only teaches using a rayon yarn having
a denier of 2.29, not an aromatic polyamide yarn (Br. 9). Although this
argument is technically correct (see Lambdin, col. 3, ll. 25-35), Appellant
has not addressed the Examiner’s position that the use of any conventional
denier fiber would have been well within the skill of the art (Answer, 4).
See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir.
1990)(Where the difference between the claimed invention and the prior art
is some range or variable, case law has consistently held that applicant must
show that the particular range is critical). Furthermore, Appellant has not
responded to the Examiner’s position that Lambdin is directed to the same
material as the APA (rayon), and thus one substituting the aromatic
polyamide of Binning for the rayon of the APA would have used a similar
size (denier) fiber (Answer 10).3
For the foregoing reasons as well as those reasons stated in the
Answer, we determine that the Examiner has established a prima facie case
of obviousness based on the reference evidence. Based on the totality of the
record, including due consideration of Appellant’s arguments, we determine
that the preponderance of the evidence weighs most heavily in favor of
obviousness within the meaning of § 103(a). Therefore we AFFIRM both
rejections on appeal based on the combination of the APA, Binning and
Lambdin.

3 We note that the Examiner additionally relies on Ogawa (US 4,830,845)
and Ezekiel (US 3,635,675) as evidence establishing the obviousness of the
claimed denier range (Answer 10). Since these references have not been
cited in the statement of the rejection (Answer 3), we will not consider these
references as part of the Examiner’s evidence of obviousness. See In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
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Appeal 2006-2160
Application 09/896,439

B. The Rejections over the APA, Binning, Lambdin and Hirsch
The Examiner applies the APA, Binning, and Lambdin as discussed
above, further finding that these references do not specifically disclose the
poly(m-phenyleneisophthalamide)[NOMEX] recited in the claims on appeal
(Answer 4). However, the Examiner finds that Binning discloses a
polyaramid where the phenylene cannot be ortho-, thus leaving only choices
of meta- or para- substitution (Answer 5). The Examiner further cites Hirsch
as evidence that NOMEX is useful as a polyaramid starting material in a
carbonization process to form ablative composites (id.). From these
findings, the Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellant’s invention to use NOMEX
as the polyaramid in the process of Binning (id.). We agree.
Appellant argues that the cited references do not provide a motivation
to combine to produce the claimed invention (Br. 11-12). Appellant argues
that the products of Hirsch include semicarbonized aromatic polyamides and
these products are distinguished from the products of a carbonizing process
(Br. 12). Appellant also argues that Binning does not teach or suggest that
the aromatic polyamide is a poly(meta-arylamid) merely by using
phenylenes which are not ortho- (Br. 13).
Appellant’s arguments are not persuasive. As correctly found by the
Examiner (Answer, sentence bridging 4-5), Binning only discloses two
possible phenylene substitutions, i.e., meta- and para. Disclosure of such a
small genus is tantamount of a description of each species. See In re
Schaumann, 572 F.2d 312, 315-17, 197 USPQ 5, 9 (CCPA 1978); In re
Petering, 301 F.2d 676, 681-82, 133 USPQ 275, 279-80 (CCPA 1962).
Additionally, we note that Binning exemplifies an aromatic polyamide
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Appeal 2006-2160
Application 09/896,439

which is meta- substituted (Example 8; see col. 9, ll. 7-8). Although Hirsch
is directed to semicarbonizing materials, we note that the Examiner has
merely cited this reference as evidence that NOMEX is known in the art as a
heat-resistant material (Answer 10).
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence. Based on the totality of the
record, including due consideration of appellant’s arguments, we determine
that the preponderance of the evidence weighs most heavily in favor of
obviousness within the meaning of § 103(a). Therefore, we AFFIRM both
rejections on appeal based on the APA, Binning, Lambdin, and Hirsch.
C. Summary
All rejections on appeal have been AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(2004).
AFFIRMED

TAW/tf

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P.O. Box 2550
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