Ex Parte Wolff Fabris et alDownload PDFPatent Trial and Appeal BoardDec 26, 201813243068 (P.T.A.B. Dec. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/243,068 09/23/2011 Felipe WolffFabris 423 7590 12/28/2018 HENKEL CORPORATION One Henkel Way ROCKY HILL, CT 06067 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. H 8210 PCT/US 9434 EXAMINER THOMPSON, CAMIE S ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 12/28/2018 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): rhpatentmail@henkel.com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FELIPE WOLFF F ABRIS, ANDREAS FERENCZ, KATIA KLOPHAUS, and VOLKER ALTSTADT Appeal2017-001524 Application 13/243,068 1 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's decision finally rejecting claims 1-5, 7-12, 14, 16, and 18 under 35 U.S.C. 1 The real party in interest is said to be Henkel AG & Co. KGaA. Appeal Brief dated May 31, 2016 ("App. Br."), at 1. Appeal2017-001524 Application 13/243,068 § I03(a) as unpatentable over Turpin et al. 2 in view ofDoring. 3 A hearing was held on November 19, 2018. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The claims on appeal are directed to a method for manufacturing a fiber- containing composite material comprising the steps of (a) providing fibers, (b) treating the fibers with thermoplastic particles, ( c) contacting the treated fibers with a composition comprising an epoxy resin and an initiator to form a fiber- containing agent, and ( d) curing the fiber-containing agent by irradiation (i.e., non- thermally). See Spec. ,r 85 ( disclosing that "' [ n ]on-thermally' is understood in the present invention as hardening initiated by radiation, a thermal initiation brought about by specifically and actively delivered thermal energy not being encompassed"). The Appellants disclose: A particular advantage of non-thermal hardening is that because of the high reactivity of the initiators used, effective hardening can already be brought about at relatively low temperatures in relatively short periods of time. The result is that there is only a very low level of thermal stress on the respective agent, so that the thermoplastic particles retain their particulate nature during the hardening operation. . . . [T]he particulate nature of the thermoplastic particles brings about particularly effective intralaminar toughness modification of the fiber-containing composite material of the present invention. Spec. ,r 83 ( emphasis added). 2 US 5,248,550, issued September 28, 1993 ("Turpin"). 3 W02008064959 (A2), dated June 5, 2008 ("WO 959"). The Examiner relies on US 2010/0113639 Al, published May 6, 2010 ("Doring"), as evidence of the WO 959 disclosure. The Appellants do not object. See App. Br. 4, n. *. Therefore, in this Decision on Appeal, we also rely on Doring as evidence of the WO 959 disclosure. 2 Appeal2017-001524 Application 13/243,068 Independent claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. 1. A method for manufacturing a fiber-containing composite material, steps of which comprise: a) providing fibers, b) treating the fibers with thermoplastic particles selected from solid rubbers, block copolymers, polysulfones, polyethersulfones, polyetherketones, polybutylene terephthalates, polycarbonates, polyetherimides, polyalkylenes, polyamides, polyesters, polyamide-imides, polyaryl ethers, or polyarylates, c) contacting the treated fibers obtained in step b) with a composition comprising at least one epoxy resin, and at least one initiator that has a neutral charge and contains one or more cationic metal-olefin complexes, to form a fiber-containing agent, and d) curing the fiber-containing agent obtained in step c) by irradiation selected from X-radiation, gamma rays, electron beams, or UV rays, sufficient to form a fiber-containing composite material, wherein at least 90% of the thermoplastic particles, based on the total number of thermoplastic particles, have an average particle size of 20 µm to 70 µm. App. Br. 14--15. B. DISCUSSION The Examiner finds that Turpin discloses applying gel coated thermoplastic resin particles to reinforcement fibers, such as carbon fibers, to form a pre-preg or composite. Final Act. 2. 4 The Examiner finds that the thermoplastic resin particles can include polyimide, polyether sulfone, and polycarbonate. Final Act. 3. The Examiner finds that the treated reinforcement fibers can be mixed with a thermosetting resin, such as epoxy, and subsequently cured. Final Act. 3. 4 Final Office Action dated December 3, 2015. 3 Appeal2017-001524 Application 13/243,068 The Examiner finds Turpin does not disclose the claimed initiator. Final Act. 3. The Examiner, however, finds Doring discloses a composite comprising non-woven fibers that are coated with an epoxy resin system comprising an initiator within the scope of claim 1. Final Act. 3. The Examiner finds that the initiator "provide[s] good shelf stability." Final Act. 3. Therefore, the Examiner concludes that "[ o ]ne of ordinary skill in the art would be motivated to use the epoxy resin composition of [Doring] as the epoxy resin system in Turpin for the benefit of having a composite that has good shelf stability." Final Act. 4. The Appellants argue that the claimed initiators "cure the epoxy resin under irradiation rather than heat, [whereby] the thermoplastic particles remain in particulate form, which improves toughness properties." App. Br. 12. The Appellants argue that Turpin and Doring do not establish a prima facie case of obviousness. App. Br. 12. Although Doring discloses a radiation curable initiator as claimed (Doring ,r 107), the Appellants argue that Turpin discloses thermal curing conditions. The Appellants argue that "the thermal curing conditions of Turpin are such that the 'gel coated thermoplastic particles become soluble in the base thermoset resin and will readily pass into solution therein"' (Turpin, col. 5, 11. 64---68). App. Br. 12-13. The Appellants' argument is persuasive of reversible error. Turpin's pre- preg is "subjected to curing, as by heating at a temperature, e.g., of the order of about 350° F., and under pressure, e.g., about 85 psi." Turpin, col. 5, 11. 47-51. Under those curing conditions, Turpin discloses that "the gel coated thermoplastic particles become soluble in the base thermoset resin and will readily pass into solution therein." Turpin, col. 5, 11. 64---68; see also Turpin, col. 7, 11. 44--52 (disclosing that when the pre-preg is cured at 350° F. and 85 psi, "the gel coated polyimide particles are dissolved within the bismaleimide thermoset matrix with 4 Appeal2017-001524 Application 13/243,068 no clear lines of demarcation between the polyimide thermoplastic particles and the bismaleimide thermoset matrix"). In contrast, the Examiner finds that Doring "discloses that the initiator is curable by means of radiation selected from X-rays, gamma rays, electron beams or UV rays" (i.e., non-thermally). Final Act. 3 (citing Doring ,r 107). On this record, the Examiner has failed to explain, in any detail, why curing Turpin's pre- preg by irradiation using the initiator disclosed in Doring would have been expected to dissolve the thermoplastic resin particles in the base thermoset resin as disclosed in Turpin. For that reason, the obviousness rejection is not sustained. 5 See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("the examiner bears the initial burden ... of presenting a prima facie case of unpatentability"). C. DECISION The Examiner's decision is reversed. REVERSED 5 In view of our grounds for reversal, it is not necessary to address the Appellants' argument that claim 1 excludes the gel coated thermoplastic particles disclosed in Turpin. See App. Br. 8. Nonetheless, we note that the Appellants disclose that "[a] 'thermoplastic particle' is understood for purposes of the present invention as a particulate element, solid at 20°C and 1013 mbar, that is made up substantially or completely of one, or a mixture of different, thermoplastic polymer( s ). " Spec. ,r 29 (emphasis added); see also York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73, (Fed. Cir. 1996) ("Ordinarily ... 'substantially' means 'considerable in ... extent,' American Heritage Dictionary Second College Edition 1213 (2d ed. 1982), or 'largely but not wholly that which is specified,' Webster's Ninth New Collegiate Dictionary 1176 (9th ed. 1983)."). During the hearing, counsel for the Appellants indicated that a thermoplastic particle made up substantially of a thermoplastic polymer does not include a coated thermoplastic particle, such as the gel coated thermoplastic particle disclosed in Turpin. Transcript 3, 1. 17--4, 1. 18. 5 Copy with citationCopy as parenthetical citation