Jacobus Hendricus Antonius. Van Der Woude et al.

Patent Trials and Appeals Board

Aug 27, 2019

13075640 - (D) (P.T.A.B. Aug. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/075,640 03/30/2011 Jacobus Hendricus Antonius Van Der Woude PPG 5147P1
(32961/416474)
2094
7590 08/27/2019
J. Jason Link
KILPATRICK TOWNSEND & STOCKTON LLP
1001 West Fourth Street
Winston-Salem, NC 27101
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
08/27/2019 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 JACOBUS HENDRICUS ANTONIUS VAN DER WOUDE,
JACOB CORNELIS DIJT, JOHN THEO PENNING,
RONALD BOELMAN, JOHANNES LEONARDUS TABAK,
and CREIG DEAN BOWLAND
____________

Appeal 2018-002303
Application 13/075,640
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1, 3–13, 15–24, and 26–362. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify PPG Industries Ohio, Inc. as the real party in interest.
Appeal Brief filed August 4, 2017 (“App. Br.”), 1.
2 Final Office Action entered October 20, 2016 (“Final Act.”), 1.
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STATEMENT OF THE CASE
Independent claims 1, 13, 24, and 36 each recite a fiber glass strand.
App. Br. 1–3. Claims 1 and 36 illustrate the subject matter on appeal, and
are reproduced below with contested language italicized:
1. A fiber glass strand comprising:
at least one glass fiber at least partially coated with an
aqueous sizing composition comprising
an acid-amine component,
the acid-amine component comprising molecules
of at least one primary amine associated with molecules
of at least one phosphorus-containing acid or sulfur-
containing acid,
wherein the molecules of the at least one amine are
associated with the molecules of the at least one
phosphorus-containing acid or sulfur-containing acid
through Lewis acid-base interactions,
and wherein the phosphorus atom in the
phosphorus-containing acid has an oxidation state that is
less than 5,
wherein the at least one glass fiber has a diameter of up
to about 35 microns, and
wherein the molar ratio of the at least one phosphorus-
containing acid or sulfur-containing acid to the amine is
between about 0.1 and about 3.

36. A fiber glass strand comprising:
at least one glass fiber at least partially coated with an
aqueous sizing composition comprising:
(a) from about 3 to about 9 weight percent phosphorus
containing acid on a total solids basis;
(b) from about 25 to about 40 weight percent
aminosilane on a total solids basis; and
(c) from about 49 to about 70 weight percent film-former
on a total solids basis.

App. Br. 21, 25–26 (Claims Appendix) (emphasis added and spacing
altered).
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Independent claim 13 recites, in part, a fiber glass strand comprising
at least one glass fiber at least partially coated with an aqueous sizing
composition comprising an acid-aminosilane component comprising
molecules of at least one aminosilane comprising a primary amine
associated with molecules of at least one phosphorus-containing acid of a
particular formula recited in the claim. Independent claim 24 recites, in part,
a fiber glass strand comprising at least one glass fiber at least partially
coated with an aqueous sizing composition comprising an acid-aminosilane
component comprising molecules of at least one primary aminosilane
associated with molecules of at least one phosphorus-containing acid of a
particular formula recited in the claim. Independent claims 13 and 24 both
require the at least one glass fiber to have a diameter of up to about 35
microns, and require the molar ratio of the at least one phosphorus-
containing acid to the amine to be between about 0.1 and about 3.
The Examiner maintains the following rejections in the Examiner’s
Answer entered November 1, 2017:
I. Claims 1, 13, and 24 for nonstatutory obviousness-type double
patenting over claims 1, 28, and 29 of copending patent application number
12/267,963;
II. Claims 1, 3–13, 15–23, and 36 under 35 U.S.C. § 103(a) as
unpatentable over Augier3 in view of Schell4;
III. Claims 24, 26–31, and 34 under 35 U.S.C. § 103(a) as
unpatentable over Augier in view of Schell and Hansen5;

3 Augier et al., US 5,736,246, issued April 7, 1998 (“Augier”).
4 Schell et al., US 6,207,737 B1, issued March 27, 2001 (“Schell”).
5 Hansen et al., US 2009/0227706 A1, published September 10, 2009
(“Hansen”).
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IV. Claims 32 and 33 under 35 U.S.C. § 103(a) as unpatentable
over Augier in view of Schell, Hansen, and Sperk6; and
V. Claim 35 under 35 U.S.C. § 103(a) as unpatentable over Augier
in view of Schell and Puckett7.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ timely contentions8, we affirm the Examiner’s rejections
of claims 1, 3–13, 15–24, and 26–36 under 35 U.S.C. § 103(a), for the
reasons set forth in the Final Action, the Answer, and below. We affirm the
Examiner’s rejection of claims 1, 13, and 24 for nonstatutory obviousness-
type double patenting because Appellants do not contest this rejection, as
discussed below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellants provide for each issue the appellants
identify. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).

6 Sperk, Jr. et al., US 5,258,445, issued November 2, 1993 (“Sperk”).
7 Puckett, US 2005/0100734 A1, published May 12, 2005.
8 We do not consider any new argument Appellants present in their Reply
Brief that Appellants could have raised in the Appeal Brief. 37 C.F.R.
§ 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Rejection I: claims 1, 13, and 24 for nonstatutory
obviousness-type double patenting
We summarily sustain the Examiner’s rejection of claims 1, 13, and
24 for nonstatutory obviousness-type double patenting over claims 1, 28,
and 29 of copending patent application number 12/267,963 because
Appellants do not contest this rejection. App. Br. 4; 37 C.F.R.
§ 41.37(c)(1)(iv) (requiring that “arguments shall explain why the examiner
erred as to each ground of rejection . . . [and that] any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board”); see also Manual of Patent Examining Procedure § 1205.02 (9th
ed. Jan. 2018) (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner’s answer.”).
Rejection II: claims 1, 3–13, 15–23, and 36 under 35 U.S.C. § 103(a) as
unpatentable over Augier in view of Schell
Appellants present separate arguments for claims 3, 4, 15, 16, and 36,
and argue the remaining claims subject to this rejection as a group on the
basis of independent claims 1 and 13, which Appellants argue together.
App. Br. 4–16. We accordingly address claims 3, 4, 15, 16, and 36
separately, and select claim 1 as representative of claims 1, 5–13, and 17–23.
37 C.F.R. § 41.37(c)(1)(iv).
Claims 1, 5–13, and 17–23
Augier discloses a sizing composition used for “coating glass strands
for reinforcement of organic and/or inorganic materials and providing
corrosion resistance thereto.” Col. 2, ll. 39–54. Augier discloses that the
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glass strands are “preferably composed of filaments having a diameter of
between 5 and 24 µm.” Col. 3, ll. 35–41, col. 4, ll. 36–45.
Augier discloses that the sizing composition comprises a silane of the
formula Si(R1)(R2)(R3)(R4) in which R1 and R2 are alkoxy groups and R3 and
R4 can be hydrocarbon radicals optionally containing one or more nitrogens.
Col. 2, ll. 39–52. Augier discloses that that the sizing composition “may
include one or more other silanes generally acting as coupling agents,
especially one or more silanes commonly used in sizes.” Col. 6, ll. 50–54.
Augier discloses that the maximum amount of all silanes in the sizing
composition should not exceed 25% by weight of a dry extract of the
composition. Col. 6, ll. 62–64. Augier discloses that the sizing composition
can include other components commonly used in sizing compositions, such
as film forming agents, in an amount preferably less than 30% by weight of
a dry extract of the composition. Col. 8, ll. 12–18.
Augier discloses that the sizing composition can also include at least
one phosphonic acid or phosphonic acid derivative (claims 1 and 4), and
discloses that when glass strands coated with the composition are intended
for reinforcement of an alkaline material such as cement, the sizing
composition includes a silane as described above, optionally an adhesive
having an one or more epoxy functional groups, and at least one phosphonic
acid or phosphonic acid derivative. Col. 8, ll. 42–48. Augier discloses that:
The alkali-resistant glass strands coated with the size according
to the present invention are thus advantageous not only for the
direct reinforcement of corrosive inorganic materials, including
alkaline materials such as cement, but also, and even more
surprisingly and advantageously, for the reinforcement of
organic materials which may or may not be intended to be
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subjected to high stresses in a corrosive medium (for example
in cement).
Col. 5, ll. 3–10. Augier discloses that the amount of phosphonic acid
included in the sizing composition “is generally between 0 and 40% by
weight of the dry extract of the composition and preferably, when the glass
strands are intended to be combined directly with an alkaline inorganic
material such as cement, between 10 and 40% by weight of the dry extract of
the composition.” Col. 8, ll. 6–11.
The Examiner finds that although Augier discloses that the sizing
composition can include “other silanes generally acting as coupling agents,”
Augier does not disclose that such additional silanes include a primary
amine, and the Examiner relies on Shell’s disclosure of coupling agents
having primary amines. Final Act. 4–5 (emphasis omitted). More
specifically, Schell discloses a sizing composition for glass fibers used to
reinforce thermoplastics such as polyolefins. Col. 1, ll. 15–18. Schell
discloses that the sizing composition comprises a coupling agent, a film-
forming material, and a stabilizer. Col. 2, ll. 10–17. Schell discloses that
the film-forming material is generally present in an amount ranging from
about 50 weight percent to about 90 weight percent based on the total solids
content of the sizing composition. Col. 6, ll. 21–26. Schell discloses that
suitable coupling agents include functional organo silanes, such as 3-
aminopropyldimethylethoxysilane, gamma-aminopropyltriethoxysilane,
gamma-aminopropyltrimethoxysilane, beta-aminoethyltriethoxysilane, and
N-beta-aminoethylaminopropyltrimethoxysilane, which include primary
amine groups. Col. 4, ll. 47–49, col. 5, ll. 7–12.
Based on these disclosures in Augier and Schell, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
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at the time of Appellants’ invention to substitute a functional organo silane
coupling agent as disclosed in Schell for the silane coupling agent disclosed
in Augier, because both silanes are taught to be useful as coupling agents in
sizing compositions for coating glass strands used to reinforce organic
composite materials. Final Act. 5.
Appellants argue that “Augier’s use of at least one phosphonic acid or
phosphonic acid derivative occurs only in an embodiment where the glass
fibers are reinforcing an inorganic material, namely, cement, which is
alkaline.” App. Br. 6–7 (citing Augier col. 7, ll. 42–48). Appellants argue
that “the compositions of Augier that comprise a phosphonic acid or a
phosphonic acid derivative are taught as being useful for alkaline inorganic
composites, but not for organic composites [as disclosed in Schell], which
generally do not suffer from excess alkalinity.” Id. at 7 (citing Shell
Abstract). Appellants argue that one of ordinary skill in the art, therefore,
“would not have combined the disparate teachings of the cited portions in
Augier and Schell,” and would not have had a reasonable expectation of
success for such combination, because the cited disclosures in Augier and
Schell “are directed to non-analogous uses.” App. Br. 6–7, 9–10.
Contrary to Appellants’ arguments, however, Augier’s disclosure of
including at least one phosphonic acid or phosphonic acid derivative in the
sizing composition described in the reference is not limited to only an
embodiment in which glass fibers coated with such a sizing composition are
used to reinforce alkaline inorganic materials, such as cement. Rather, as
discussed above, Augier includes a more general disclosure that the sizing
composition described in the reference can include at least one phosphonic
acid or phosphonic acid derivative (claims 1 and 4), and this general
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disclosure does not specify any limitation as to the particular type of
composite materials that can be successfully reinforced with glass fibers
coated with such a sizing composition.
In addition, as also discussed above, Augier discloses that the amount
of phosphonic acid included in the sizing composition “is generally between
0 and 40% by weight of the dry extract of the composition and preferably,
when the glass strands are intended to be combined directly with an alkaline
inorganic material such as cement, between 10 and 40% by weight of the dry
extract of the composition.” Col. 8, ll. 6–11. Augier, thus, differentiates
between using the sizing composition described in the reference to coat glass
strands for reinforcement of alkaline inorganic material such as cement,
from using the sizing composition to coat glass strands for reinforcement of
other materials, by indicating that differing amounts of phosphonic acid
should be included in sizing compositions used for these different
applications. In so doing, Augier implicitly indicates that phosphonic acid
can be included in sizing compositions used to coat glass strands for
reinforcement of materials other than alkaline inorganic materials. In other
words, Augier’s explicit disclosure of including a different amount of
phosphonic acid in sizing compositions used to coat glass strands for
reinforcement of alkaline inorganic materials (10 and 40%) than for
inclusion in sizing compositions generally (0 and 40%), reasonably would
have indicated to one of ordinary skill in the art that inclusion of phosphonic
acid in Augier’s sizing composition is not limited to use of the sizing
composition for applications in which the composition is used to coat glass
strands for reinforcement of alkaline inorganic materials. Furthermore, as
also discussed above, Augier explicitly discloses that the sizing composition
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of Augier’s invention can be used advantageously to coat glass strands for
reinforcement of organic materials.
Augier’s disclosures as a whole, therefore, would have indicated to
one of ordinary skill in the art that the sizing composition of Augier’s
invention that comprises a phosphonic acid could be used to coat glass
strands for reinforcement of organic materials. In view of Schell’s
disclosure of functional organo silanes suitable for use as coupling agents in
a sizing composition applied to glass fibers for reinforcing thermoplastics
such as polyolefins (organic materials), one of ordinary skill in the art
reasonably would have been led to use a functional organo silane coupling
agent as disclosed in Schell as the silane coupling agent of Augier’s sizing
composition, with a reasonable expectation of successfully using the sizing
composition to coat glass strands for reinforcement of organic materials.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges
old elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”); In re Kubin, 561 F.3d 1351,
1360 (Fed. Cir. 2009) (“Obviousness does not require absolute predictability
of success . . . all that is required is a reasonable expectation of success”
(emphasis omitted) (citing In re O’Farrell, 853 F.2d 894, 903‒04 (Fed. Cir.
1988))).
Appellants argue that “one [of] ordinary skill in the art would not have
combined Augier and Schell” because the Examiner’s “proposed
combination of Augier and Schell presents incompatibilities of chemicals of
Augier with chemicals of Schell.” App. Br. 10. Appellants argue that
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“Augier’s compositions comprise a large amount of adhesive having an
epoxy or a polyester functionality,” and one of ordinary skill in the art would
have expected that the primary amines disclosed in Schell could react with
such epoxy and polyester groups to form amino-alcohols and amides, instead
of forming an acid-amine component as recited in claim 1. Id. Appellants
argue that one of ordinary skill in the art also would have understood that
phosphonic acid is present in Augier’s sizing composition to neutralize
alkaline conditions in cement, and if the basic primary amines disclosed in
Schell were added to Augier’s inorganic cement composite compositions,
the primary amines would decrease the neutralizing ability of Augier’s
composition, rendering it unsuitable for intended purpose of neutralizing
alkaline inorganic composite materials. Id.
As discussed above, however, Augier’s disclosures as a whole would
have indicated to one of ordinary skill in the art that the sizing composition
of Augier’s invention comprising a phosphonic acid could be used to coat
glass strands for reinforcement of organic materials, and the intended
purpose of Augier’s sizing composition is, therefore, not limited to
neutralizing alkaline inorganic composite materials. Furthermore, as the
Examiner points out (Ans. 19), Appellants do not provide any evidence to
support the asserted chemical incompatibilities between the primary amines
disclosed in Schell and the components of Augier’s sizing composition. It is
well-established that unsupported attorney arguments do not constitute
evidence necessary to resolve a disputed question of fact. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow
from common experience is just attorney argument and not the kind of
factual evidence that is required to rebut a prima facie case of
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obviousness.”); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1043 (Fed. Cir. 2017) (“Attorney argument is not evidence” and cannot
rebut other admitted evidence.); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney’s argument in a brief cannot take the place of evidence.”);
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument in the brief does
not take the place of evidence in the record.”).
Appellants argue that “Augier fails to teach or suggest the limitation
[recited in claim 1] of fiber diameter up to about 35 microns, instead
teaching a diameter ‘of between 5 and 24 μm.’” App. Br. 12–13.
It is well-established, however, that even a slight overlap between a
range disclosed in the prior art and a claimed range renders the claimed
range prima facie obvious. In re Peterson, 315 F.3d 1325, 1329–30 (Fed.
Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range establishes a
prima facie case of obviousness. . . .”). In such circumstances, the burden
shifts to the appellants to establish the criticality of the claimed range,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (indicating that in cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims, the applicant must show that the particular range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.).
In the present case, Augier’s disclosure of glass strands “preferably
composed of filaments having a diameter of between 5 and 24 µm” renders
the glass fiber diameter of “up to about 35 microns” recited in claim 1 prima
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facie obvious, due to the substantial overlap between the ranges. Peterson,
315 F.3d at 1329–30. The burden, therefore, shifts to Appellants to
demonstrate the criticality of the recited range. Woodruff, 919 F.2d at 1578.
On the record before us, as discussed more fully below, Appellants do not
meet this burden because Appellants do not establish that a glass fiber
diameter as recited in claim 1 achieves unexpected results relative to a glass
filament diameter of between 5 and 24 microns as disclosed in Augier.
Appellants argue that Augier does not disclose a molar ratio of
phosphorus-containing acid to amine of between about 0.1 and about 3 as
recited in claim 1. App. Br. 13–14. Appellants argue that Augier instead
discloses that the maximum amount of silanes in Augier’s sizing
composition should not exceed 25 % by weight, and the amount of
phosphonic acid included in the composition is generally between 0 and 40
% by weight. Id. at 13. Appellants argue that these disclosures “teach[] an
infinite number of ratios of silane to phosphonic acid” because “if one takes
the highest weight percent of phosphonic acid, 40 wt %, and divides by the
lowest weight percent of amine, 0 wt. %, the ratio is infinite, since one
cannot divide by zero” and “if one takes the lowest weight percent of
phosphonic acid, 0 wt. %, and divides by the highest weight percent of
amine, 25 wt. %, the ratio is zero.” Id.
As the Examiner explains (Ans. 22), however, “where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955). Thus, “[n]ormally, it is to be
expected that a change in temperature, or in concentration, or in both, would
be an unpatentable modification.” Id. at 456; see also Peterson, 315 F.3d at
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1330 (“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.”).
One of ordinary skill in the art seeking to produce a sizing
composition as disclosed in Augier modified as suggested by Schell would
have determined appropriate amounts of phosphonic acid and primary
amine-containing functional organo silane coupling agent to include in the
composition, and would have arrived at optimal amounts, such as amounts
that would result in a molar ratio of phosphonic acid to primary amine of
between about 0.1 and about 3 as recited in claim 1, through nothing more
than routine experimentation. Aller, 220 F.2d at 456. On the record before
us, Appellants do not argue, much less demonstrate, the criticality of the
molar ratio range recited in claim 1, and Appellants’ argument that Augier
does not disclose the molar ratio of phosphorus-containing acid to amine
recited in claim 1 is, therefore, unpersuasive of reversible error. Woodruff,
919 F.2d at 1578; Jung, 637 F.3d at 1365.
Appellants argue that “Schell teaches away from independent claim[]
1” by expressly teaching the use of conjugate base salt salts derived from
phosphorus-containing acids in its sizing compositions instead of
phosphorus-containing acids in their acidic form as recited in claims 1 and
13. App. Br. 8 (citing Shell col. 2, ll. 17–43).
As the Examiner explains (Ans. 16), however, although Schell may
disclose including conjugate base salt salts derived from phosphorus-
containing acids in the sizing compositions described in the reference, rather
than phosphorus-containing acids in their acidic form as recited in claim 1,
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“mere disclosure of alternative designs does not teach away.” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, teaching away requires “clear
discouragement” from implementing a technical feature. In re Ethicon, Inc.,
844 F.3d 1344, 1351 (Fed. Cir. 2017); see also Meiresonne v. Google, Inc.,
849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that ‘merely expresses a
general preference for an alternative invention but does not criticize,
discredit, or otherwise discourage investigation into’ the claimed invention
does not teach away” (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737
F.3d 731, 738 (Fed. Cir. 2013).)).
We find no disclosure in Schell that criticizes, discredits, or otherwise
would have discouraged one of ordinary skill in the art from using a
phosphorous-containing acid in a sizing composition for a fiber glass strand
as recited in claim 1, and Appellants do not identify any such disclosure.
Accordingly, contrary to Appellants’ arguments, Schell does not teach away
from the sizing composition recited in claim 1.
Appellants argue that the Declaration of inventor Jacob Cornelis Dijt
filed December 29, 2014 includes experimental examples that “demonstrate
unexpected benefits of embodiments of the claimed sizing compositions
(Compositions A, B, and F-K) with respect to sizing compositions that
employ the conjugate base form of the phosphorus-containing acid.” App.
Br. 11.
It is well-established, however, that “when unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). As discussed above, the sizing
composition disclosed in Augier includes phosphonic acid, rather than a
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conjugate base form of a phosphorus-containing acid. The relied-upon
examples described in the Dijt Declaration comparing “claimed sizing
compositions” to compositions that included a conjugate base form of a
phosphorus-containing acid, therefore, do not provide a comparison between
the sizing composition recited in claim 1 and the sizing composition of the
closest prior art, Augier. Accordingly, the relied-upon comparison set forth
in the Dijt Declaration does not support Appellants’ assertion of unexpected
results. Baxter, 952 F.2d at 392.
Appellants argue that Examples 6 and 7 and Table 3 of their
Specification demonstrate the unexpected usefulness of fibers coated with an
aqueous sizing composition as claimed having a diameter “of at least 22 or
24 microns, or up to about 35 microns” because the experiments show that
composites including coated glass fibers having a diameter of 24 microns
displayed a higher modulus, tensile strength, flexural strength, and
unnotched Charpy impact strength than composites including coated glass
fibers having a diameter of 17 microns. App. Br. 15.
As the Examiner finds (Ans. 22–23), however, the experimental
examples in the Specification relied on by Appellants indicate that a
different sizing composition was applied to the glass fibers having a
diameter of 17 microns than was applied to the glass fibers having a
diameter of 24 microns. Spec. 31–34. Consequently, it is unclear whether
the difference in physical properties exhibited by the composites into which
the different coated glass fibers were incorporated was due to the difference
in the diameters of the glass fibers, or due to the difference in the sizing
compositions applied to the fibers. In re Dunn, 349 F.2d 433, 439 (CCPA
1965) (“The cause and effect sought to be proven is lost here in the welter of
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unfixed variables.”). The relied-upon examples in the Specification are,
therefore, insufficient to establish that the glass fiber diameter recited in
claim 1 imparts results that would have been unexpected by one of ordinary
skill in the art at the time of Appellants’ invention.
Considering the totality of the evidence relied-upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner’s conclusion
of obviousness. We, accordingly, sustain the Examiner’s rejection of claims
1, 5–13, and 17–23 under 35 U.S.C. § 103(a).
Claims 3 and 15
Claim 3 depends from claim 1 and recites that the at least one glass
fiber has a diameter of at least about 22 microns. Claim 15 depends from
claim 13 and also recites that the at least one glass fiber has a diameter of at
least about 22 microns.
Appellants argue that “that the claimed range for claims 3 and 15 is at
least about 22 microns to up to about 35 microns, which has minimal
overlap with Augier’s range.” App. Br. 13.
Contrary to Appellants’ arguments, claims 3 and 15 do not recite a
glass fiber diameter range of “at least about 22 microns to up to about 35
microns.” Rather, claims 3 and 15 recite a glass fiber diameter range of at
least about 22 microns, which overlaps significantly with the glass filament
diameter range of between 5 and 24 µm disclosed in Augier, rendering the
recited range prima facie obvious. Peterson, 315 F.3d at 1329–30. For
reasons discussed above, Appellants do not establish the criticality of the
glass fiber diameter range recited in claims 3 and 15 because Appellants do
not show that a glass fiber diameter as recited in these claims achieves
unexpected results relative to a diameter of between 5 and 24 microns as
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disclosed in Augier.
We, accordingly, sustain the Examiner’s rejection of claims 3 and 15
under 35 U.S.C. § 103(a).
Claims 4 and 16
Claim 4 depends from claim 1 and recites that the nominal diameter of
the at least one glass fiber is about 24 microns. Claim 16 depends from
claim 13 and also recites that the nominal diameter of the at least one glass
fiber is about 24 microns.
Appellants argue that “the claimed range for claims 4 and 16 is at
least about 24 microns to up to about 35 microns, which has no overlap with
Augier’s range.” App. Br. 13.
Contrary to Appellants’ arguments, however, claims 4 and 16 do not
recite a glass fiber diameter range of “at least about 24 microns to up to
about 35 microns.” Rather, claims 4 and 16 recite that the nominal diameter
of the at least one glass fiber is about 24 microns.
Use of the term “about” in claims 4 and 16 in connection with the
recited nominal diameter indicates that diameters of somewhat above and
below 24 microns are encompassed by these claims. Augier’s disclosure of
a filament diameter of between 5 and 24 µm would have suggested a
diameter of “about 24 microns” as recited in claims 4 and 16, due to
Augier’s explicit disclosure of between 5 and 24 µm.
We, accordingly, sustain the Examiner’s rejection of claims 4 and 16
under 35 U.S.C. § 103(a).
Claim 36
Independent claim 36 recites a fiber glass strand comprising at least
one glass fiber at least partially coated with an aqueous sizing composition
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comprising, in part, from about 25 to about 40 weight percent aminosilane
on a total solids basis, and from about 49 to about 70 weight percent film-
former on a total solids basis.
Appellants argue that the Examiner’s rejection relies on Schell’s
disclosure of an amount of film forming component without considering
Augier’s explicit teaching of using preferably less than 30 % by weight film
former, which Appellants argue teaches away from using more than 30 % by
weight film former. App. Br. 14.
A range may be disclosed by multiple prior art references, however,
where the various values disclosed in the prior art references are generally
directed to the same subject matter. Iron Grip Barbell Co. v. USA Sports,
Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
As discussed above, Augier and Schell both disclose sizing
compositions for glass strands used to reinforce organic materials. Augier
discloses that the sizing composition described in the reference can include
components commonly used in sizing compositions, such as film forming
agents, in an amount preferably less than 30% by weight of a dry extract of
the composition. Col. 8, ll. 12–18. Schell discloses that the sizing
composition described in the reference includes a film-forming material
generally present in an amount ranging from about 50 weight percent to
about 90 weight percent based on the total solids content of the sizing
composition. Col. 6, ll. 21–26.
Augier and Shell thus disclose a weight range of film forming
material suitable for use in sizing compositions for glass strands used to
reinforce organic materials that encompasses the range of about 49 to about
70 weight percent recited in claim 36, rendering the recited range prima
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facie obvious. Peterson, 315 F.3d at 1329–30 (“Selecting a narrow range
from within a somewhat broader range disclosed in a prior art reference is no
less obvious than identifying a range that simply overlaps a disclosed range.
In fact, when, as here, the claimed ranges are completely encompassed by
the prior art, the conclusion is even more compelling than in cases of mere
overlap.”). On the record before us, Appellants do not argue, much less
demonstrate, the criticality of the film former weight range recited in claim
1. Woodruff, 919 F.2d at 1578.
Appellants argue that “[a] person of ordinary skill, upon reading the
explicit teaching of Augier that the total amount of silanes [included in
Augier’s sizing composition] should not exceed 25 % by weight would not
arrive at the instantly claimed range of from about 25 to about 40 weight
percent aminosilane on a total solids basis.” App. Br. 14–15.
As discussed above, however, Augier discloses that the sizing
composition of Augier’s invention comprises an aminosilane by indicating
that the composition comprises a silane of the formula Si(R1)(R2)(R3)(R4) in
which R3 and R4 can be hydrocarbon radicals optionally containing one or
more nitrogens. Col. 2, ll. 39–52. As with the rejection of claim 1 discussed
above, the Examiner proposes substituting a functional organo silane
coupling agent including a primary amine as disclosed in Schell for the
silane coupling agent disclosed in Augier. Final Act. 4–7. Augier discloses
that the maximum amount of all silanes in Augier’s sizing composition,
including silanes of the general formula set forth above and the “other
silanes” used as coupling agents—both of which would be aminosilanes in
the proposed combination of Augier and Schell—should not exceed 25% by
weight of a dry extract of the composition. Col. 6, ll. 62–64.
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Use of the term “about” in claim 36 to describe the lower limit of the
aminosilane weight range indicates that the lower limit can be applied
flexibly, allowing for an aminosilane weight percentage of somewhat below
25%. Thus, the range of less than 25% by weight aminosilanes suggested by
the combined disclosures of Augier and Schell overlaps the range of about
25 to about 40 weight percent aminosilane recited in claim 36, rendering the
recited range prima facie obvious. Peterson, 315 F.3d at 1329. On the
record before us, Appellants do not argue, much less demonstrate, the
criticality of the aminosilane weight range recited in claim 1. Woodruff, 919
F.2d at 1578.
We, accordingly, sustain the Examiner’s rejection of claim 36 under
35 U.S.C. § 103(a).
Rejection III: claims 24, 26–31, and 34 under 35 U.S.C. § 103(a) as
unpatentable over Augier in view of Schell and Hansen
Appellants argue claims 24, 26–31, and 34 together on the basis of
claim 24, to which we accordingly limit our discussion. App. Br. 17–18;
37 C.F.R. § 41.37(c)(1)(iv).
To address claim 24, the Examiner indicates that “Augier in view of
Schell is relied upon as set forth above in the rejection of claim 1.” Final
Act. 9. The Examiner finds, however, that “said combination does not
suggest that the phosphorus containing acid is phosphinic acid,” and the
Examiner relies on Hansen for suggesting inclusion of phosphinic acid in a
sizing agent composition. Final Act. 9–10.
Hansen discloses an aqueous binder composition for bonding mineral
fibers, such as glass fibers. ¶¶ 5, 49. Hansen discloses that the composition
can be used in applications typical for sizing agents. ¶ 54. Hansen discloses
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that the composition comprises a binder component obtainable by reacting at
least one alkanolamine with at least one carboxylic anhydride, and at least
one hydrolytic stability-improving agent. ¶¶ 13–15. Hansen discloses that
the composition may also include conventional additives such as phosphinic
acid. ¶¶ 40, 41.
Based on these disclosures in Hansen, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention to substitute phosphinic acid as disclosed in Hansen
for the phosphonic acid disclosed in Augier, because phosphinic acid and
phosphonic acid are both taught to be useful in sizing compositions for
coating glass strands. Final Act. 9–10.
Appellants incorporate arguments that Appellants provide for claim 1
(discussed above), and argue that the claims subject to this ground of
rejection are patentable over Augier, Schell, and Hansen for the same
reasons that claim 1 is patentable over Augier and Schell. App. Br. 16–18.
Because we are unpersuaded of reversible error in the Examiner’s rejection
of claim 1 for the reasons discussed above, Appellants’ arguments are also
unpersuasive of reversible error in the Examiner’s rejection of claim 24.
Appellants also argue that “a person of ordinary skill would find no
teaching, suggestion, or motivation or other rational underpinning from
Augier and/or Shell to add the phosphinic acid of Hansen to the composition
of the purported Augier/Shell combination.” App. Br. 18. Appellants argue
that Hansen teaches an aqueous binder composition comprising the water-
soluble reaction product of an alkanolamine with a carboxylic anhydride. Id.
Appellants argue that the alkanolamines are not primary amines, but instead
are secondary or tertiary amines, which are not available to associate with
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phosphinic acid because “they have already been reacted with a carboxylic
anhydride.” Id.
As discussed above, however, the Examiner’s proposed combination
of Hansen with Augier and Shell does not involve adding the binder
component of Hansen’s composition, which Hansen discloses is obtainable
by reacting at least one alkanolamine with at least one carboxylic anhydride,
to the sizing composition of Augier as modified by Shell. Rather, the
Examiner proposes substituting the phosphinic acid sizing composition
additive disclosed in Hansen for the phosphonic acid included in Augier’s
sizing composition as modified by Schell. Thus, Appellants’ assertion that
the alkanolamines in Hansen’s binder component are not primary amines,
and are not available to associate with phosphinic acid, do not address the
basis for the Examiner’s proposed combination of Hansen with Augier and
Schell, and, therefore, do not identify reversible error in the Examiner’s
rationale for the proposed combination. Jung, 637 F.3d at 1365.
We, accordingly, sustain the Examiner’s rejection of claims 24, 26–
31, and 34 under 35 U.S.C. § 103(a).
Rejection IV: claim 32 and 33 under 35 U.S.C. § 103(a) as unpatentable
over Augier in view of Schell, Hansen, and Sperk
To address this rejection, Appellants rely on the arguments Appellants
present for claim 24 (discussed above), and argue that the additional
reference applied in this rejection fails to cure the deficiencies of Augier,
Schell, and Hansen. App. Br. 18–19. Because we are unpersuaded of
reversible error in the Examiner’s rejection of claim 24 for the reasons
discussed above, Appellants’ position as to this rejection is also
unpersuasive of reversible error.
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Rejection V: claim 35 under 35 U.S.C. § 103(a) as unpatentable over
Augier in view of Schell and Puckett
To address this rejection, Appellants rely on the arguments Appellants
present for claim 1 (discussed above), and argue that the additional reference
applied in this rejection fails to cure the deficiencies of Augier and Schell.
App. Br. 19. Because we are unpersuaded of reversible error in the
Examiner’s rejection of claim 1 for the reasons discussed above, Appellants’
position as to this rejection is also unpersuasive of reversible error.
DECISION
We affirm the Examiner’s rejections of claims 1, 3–13, 15–24, and
26–36 under 35 U.S.C. § 103(a), and rejection of claims 1, 13, and 24 for
nonstatutory obviousness-type double patenting.
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