Kurt E. Heikkila

Patent Trials and Appeals Board

Aug 29, 2019

12278638 - (D) (P.T.A.B. Aug. 29, 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.
12/278,638 11/07/2008 Kurt E. Heikkila 0592.000001US20 3432
26813 7590 08/29/2019
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KURT E. HEIKKILA
____________________

Appeal 2017-009996
Application 12/278,638
Technology Center 1700
____________________

Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.

OGDEN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 56, 57, 59, 61, 63–66, 68–73, 78–83, and 88–90 in
the above-identified application.3 Counsel for Appellant appeared for a
hearing on June 3, 2019.4 We affirm.

1 e appeal record includes the following: Specification, Aug. 7, 2008
(“Spec.”); Non-final Office Action, Nov. 8, 2016 (“Action”); Appeal Brief,
Mar. 9, 2017 (“Appeal Br.”); Examiner’s Answer, May 17, 2017
(“Answer”); and Reply Brief, July 17, 2017 (“Reply Br.”).
2 According to the Appeal Brief, the real party in interest is Tundra
Composites, LLC. Appeal Br. 3.
3 See Action 1 (omitting claim 59); id. at 2, 5, 9 (listing claim 59 as among
the rejected claims).
4 See Hearing Transcript, entered July 10, 2019 (“Tr.”).
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BACKGROUND
Appellant’s invention relates to “methods of manufacturing a metal
polymer composite.” Appeal Br. 3. According to the Specification, this
composite material, “through a selection of metal particle size distribution,
polymer and processing conditions, attains improved density or other
properties through minimization of the polymer filled excluded volume of
the composite.” Spec. 3:26–28. Appellant distinguishes the invention from
prior art composite materials because the latter “use metal particles that are
either uncoated or coated with a reactive coupling agent.” Appeal Br. 4
(citations omitted). According to Appellant, “[w]ithout pre-treatment with
interfacial modifier, the metal particles of composites formed by
conventional methods lack desirable viscoelastic and thermoplastic
properties due to, e.g., detrimental particle to particle friction and/or particle
to polymer bonding.” Id. Appellant argues that coating the particles with an
interfacial modifier “provides the metal particulate with ‘greater freedom of
movement’ within the polymer phase after processing,” and this freedom
“results from the interfacial modifier not being reactively bonded to the
polymer phase and from the prevention of particle–particle interactions.” Id.
at 4–5
Independent claim 68, which we reproduce below, is representative:
68. A method of manufacturing a metal polymer
composite, said method comprising:
(a) combining a polymer with about 96 to 40 volume %
of a pre-treated metal particulate comprising a coating
comprising an effective composite forming amount of an
interfacial modifier wherein the metal particulate comprises
particles having a particle size of at least about 10 microns;
wherein the polymer is present in an amount sufficient to
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substantially occupy excluded volume of the metal particulate
in a metal polymer composite;
(b) mixing the pre-treated interfacial modifier coated
metal particulate and the polymer to form a mixture; and
(c) compounding the mixture to form a metal polymer
composite comprising pre-treated metal particulate within a
polymer phase;
wherein the metal particulate exhibit a circularity greater
than 13 and an aspect ratio less than 1:3; and
wherein the interfacial modifier coating allows for a
greater freedom of movement of the pre-treated metal
particulate within the polymer phase of the metal composite
after compounding compared to the same composite without
the exterior coating on the metal particulate, when measured
under the same conditions.
Appeal Br. Claims App’x 2–3 (emphases added). Claims 56, 73, and 80 are
also independent, and have similar limitations, one difference being that in
claim 68, the “greater freedom of movement” property exists “after
compounding,” whereas in the other independent claims, this property exists
after melt processing (claim 56), “or in a shaped article (independent claim
73) or a composite article (independent claim 80).” Appeal Br. 21. Claims
57, 61, and 63–66 depend directly or indirectly from claim 56; claims 69–72
and 89 depend directly or indirectly from claim 68; claims 78 and 79 depend
from claim 73; and claims 81–83, 88, and 90 depend directly or indirectly
from claim 80. Appeal Br. Claims App’x 1–5.
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e Examiner’s grounds of rejection are as follows:
Rejection 1: claims 56, 57, 59, 61, 63–65, 68–73, 78, 80–83, and 88
under 35 U.S.C. § 103(a) as being unpatentable over Ando5 in view of
Economy6 and Ohkawa.7 Answer 2–5.
Rejection 2: claims 56, 57, 59, 61, 63–65, 68–73, 78, 80–83, and 88
under 35 U.S.C. § 103(a) as being unpatentable over Ando in view of
Suezaki,8 Economy, and Ohkawa. Id. at 5–9.
Rejection 3: claims 56, 57, 59, 63, 66, 73, 78, and 79 under 35 U.S.C.
§ 103(a) as being unpatentable over Sakaki9 in view of Economy and
Ohkawa. Id. at 9–13.
Rejection 4: claims 68–72 and 89 under 35 U.S.C. § 103(a) as being
unpatentable over Sakaki in view of Economy, Ohkawa, and Ando. Id. at
13–14.
Rejection 5: claims 80–83, 88, and 90 under 35 U.S.C. § 103(a) as
being unpatentable over Sakaki in view of Economy, Ohkawa, and Bray.10
Id. at 14–17.

5 Ando, JP 2001-183099 A (published July 6, 2001) (“Ando”). ere are
three translations of record: two provided by Appellant (Appeal Br. Ex. A
(“Ando A”) and Ex. B (“Ando B”), and one provided by the Examiner
(“Ando C”). See Appeal Br. Evidence App’x; Action 2.
6 Economy et al., US 4,614,629 (issued Sept. 30, 1986) (“Economy”).
7 Ohkawa et al., US 4,891,399 (issued Jan. 2, 1990) (“Ohkawa”).
8 Suezaki et al., US 5,834,549 (issued Nov. 10, 1998) (“Suezaki”).
9 Sakaki et al., US 6,364,422 B1 (issued Apr. 2, 2002) (“Sakaki”).
10 Bray et al., US 6,048,379 (issued Apr. 11, 2000) (“Bray”).
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DISCUSSION
A. Rejection 1 (Ando, Economy, and Ohkawa)
e Examiner finds that Ando discloses mixing and compounding a
composite material from the components recited in the independent claims,
to form a bullet. Action 2–3. Regarding claim 68, the Examiner finds, “Ando
shows that the metal particles have a spherical shape which reads on
circularity of greater than 13 and aspect ratio of less than 1:3.” Id. at 5.
Regarding claims 56 and 73, which recite specific parameters for melt
processing or extruding the composite material (see Appeal Br. Claims
App’x 1, 4), the Examiner cites Economy as evidence “that conventional
process[ing] techniques such as extrusion” operate at a shear rate within the
recited range, and that temperature is a result-effective variable. Action 3
(citing Economy 2:49–63); see also Answer 28–29.
Also, according to the Examiner, “Ando fails to disclose . . . that the
interfacial modifier allows for [the] claimed greater freedom of movement
between particles.” Id. at 3. However, the Examiner finds that Ohkawa
teaches a “metallic filler having a surface coated with a water repellent agent
(i.e., interfacial modifier) such as silane and titanate coupling agents.” Id. at
4 (citing Ohkawa, Abstract). According to the Examiner, Ohkawa teaches
that these coupling agents provide “good moldability, good molded
appearance, high mechanical properties, dimensional stability, and resistance
against rusting.” Id. (citing Ohkawa 1:40–2:60).
Ohkawa teaches that
[w]hen the amount of the water repellent agent is too small, no
sufficient coupling effect can be exhibited between the surface
of the filler and the matrix phase so that the resultant molding
composition would be poor in the moldability. When the
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amount thereof is too large, on the other hand, a phenomenon of
slipping may be caused due to the excessively strong effect of
lubrication between the filler surface and the matrix phase
leading to disadvantages . . . .
Ohkawa 8:10–18. According to the Examiner, this passage “strongly
suggests that the water repellent agent is not reacted with [the polymer]
matrix because there is lubrication between the filler surface and matrix
phase (i.e., not ‘excessive lubrication’) when used in lower amounts like
claimed and therefore [the composition] provides the claimed ‘greater
freedom of movement.’” Action 4 (citing Ohkawa 8:14–26). us, the
Examiner determines that “it would have been obvious to one of ordinary
skill in the art to utilize a coupling agent that improved moldability, i.e.,
improved freedom of movement between particles.” Id. at 5.
Appellant argues the following: (1) the Examiner did not articulate a
motivation to combine references to achieve the recited “greater freedom of
movement,” (2) Ando fails to teach pre-treating the metal particles, (3) Ando
fails to teach the recited circularity of claim 68, and (4) Economy is a non-
analogous reference.11 Appeal Br. 16–30. Appellant argues the claims as a

11 At the hearing, counsel for Appellant also argued that Ando “fails as a
primary reference because it wants a blend of large and small particles.” Tr.
4:20–22 (citing Ando, claim 3, ¶¶ 43, 44, 78). Similarly, counsel argued that
Sakaki teaches a broad 2–100 μm particle range and expresses a preference
for a “blend of 5 and 27 micron particles.” Id. at 7:1–4 (citing Sakaki 5:25–
30). However, according to Appellant, it is not feasible to form a coating on
very small particles. Id. at 7:1–8:13. Because Appellant did not raise these
particle-size issues in the briefs, we do not consider them in the present
appeal. See 37 C.F.R. § 41.47(e)(1) (“At the oral hearing, appellant may only
rely on Evidence that has been previously entered and considered by the
primary examiner and present argument that has been relied upon in the
brief or reply brief . . . .”).
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group, with the additional argument regarding the particle circularity and
aspect ratio of independent claim 68. See Appeal Br. 19–30. erefore, under
37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to claim 68. Claims 56,
57, 59, 61, 63–66, 69–73, 78–83, and 88–90 fall with claim 68.
Whether the Examiner articulated a sufficient rationale,
based on the references, for a skilled artisan to achieve
the recited “greater freedom of movement”
Appellant argues that the Examiner failed to articulate why a person
of ordinary skill in the art would have combined the recited references to
produce a particle coating that allows for “greater freedom of movement” of
the particles within the polymer. Appeal Br. 21. For the reasons below, we
disagree.
First, Appellant argues that Ando’s coupling agents and Ohkawa’s
water repellent agents are “reactive coupling agents” that would cause a
“coupling effect” between the particle surfaces and the polymer, such that
they would not promote freedom of movement of the particles. Id. at 21–22.
Regarding Ando’s agent, Appellant argues that “[t]he Examiner admitted
that the coupling agents of Ando do not allow for greater freedom of
movement.” Id. at 22. We agree with the Examiner that this misinterprets the
rejection, which simply states that Ando does not disclose whether the
material allows for greater freedom of movement. See Answer 23.12

12 Although the rejection does not specifically rely on Ando’s interfacial
modifiers to achieve the recited property, we note that Ando teaches using “a
titanium-based coupling agent” or, alternatively, “a silane-based coupling
agent or aluminum-based coupling agent.” Ando A ¶ 50. Similarly,
Appellant’s Specification teaches “silane compounds, titanate compounds,
[and] aluminate compounds,” Spec. 32:2–3, while including “[t]itanate
coupling agents” in four of its working examples, id. at 40:15–16, Table 1.
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Second, Appellant argues that “greater freedom of movement” is
incompatible with Ando’s teaching that the coupling agent “enhance[s] the
interfacial adhesion between thermoplastic resin composition molecules and
the heavy metal grain surface,” Appeal Br. 22 (quoting Ando C ¶ 13), and
Ohkawa’s teaching that coupling agents “increase the affinity between the
polymer phase and the metal particle filler,” id. (citing Ohkawa 10:42–49).
Appellant argues that because Ohkawa discloses a particular silane coupling
agent identified in the Specification as SIA0591.0,13 this shows that
Ohkawa’s reference to “affinity” refers to reactive coupling between the
particle and the polymer. Id. According to Appellant’s declaratory evidence,
this particular agent “reacts with a metal powder and forms a bond,” unlike
other surface additives that allow for greater freedom of movement of the
particles. Id. at 16–17 (citing Williams 2010 Decl.14 ¶¶ 7–13; Williams 2014
Decl.15).
We disagree that the use of the terms “adhesion” or “affinity” in these
references implies that the interfacial modifier is a reactive coupling agent,
or that it is incapable of allowing for greater freedom of movement. ese
statements are similar to those found in Appellant’s Specification, which
states that its interfacial modifiers “improve the association of the particulate
with the polymer.” Spec. 4:14–15; see also id. at 10:12–14 (“We believe an
interfacial modifier . . . provides an exterior coating on the particulate
promoting the close association of polymer and particulate.”). Based on the

13 See Spec. 47:30–31 (“SIA0591.0 is N-(2-aminoethyl)-3-am[i]nopropyl-
trimethoxy-silane.”).
14 Declaration of Rodney Williams, Sept. 2, 2010 (“Williams 2010 Decl.”).
15 Declaration of Rodney Williams, Dec. 16, 2014 (“Williams 2014 Decl.”).
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Specification, some degree of close “association” (i.e., adhesion or affinity)
between the particles and the polymer is consistent with freedom of
movement.
Moreover, Ohkawa teaches SIA0591.0 as only one example, among
many others, of suitable water repellent agents. For example, Ohkawa
teaches a preference for titanate compounds which, according to Appellant’s
Specification, are among the broad class of suitable interfacial modifiers, the
choice of which is “dictated by metal particulate, polymer, and application.”
Spec. 32:2–4. us, a preponderance of evidence on this record supports the
Examiner’s determination that the statements about “adhesion” or “affinity”
in Ando and Ohkawa “suggest[] that there is improved compatibility which
would provide the advantageous properties taught by Ohkawa,” evincing
increased freedom of movement of the particles. Answer 23.
ird, Appellant argues that the Examiner erred because, while
Ohkawa teaches “good moldability in shaping by injection molding,
extrusion molding and compression molding,” this moldability is only prior
to melt processing, compounding, shaping, or creation of a composite article
as required by claims 56, 68, 73, and 80, respectively. Appeal Br. 22–23
(quoting Ohkawa, Abstract). We disagree. As the Examiner correctly
explains, Ohkawa teaches an example in which “the exemplified
composition is extruded (first melting) and formed into solid pellets and
subsequently inject[ion] molded (second molding) to form test plates.”
Answer 18 (citing Ohkawa 13:9–17). Also, as the Examiner persuasively
explains, Ando teaches that after its resin composition is extruded, it can be
re-melted and formed into a balance weight by injection and compression
molding. Answer 24. us, a preponderance of the evidence on this record
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indicates that Ando’s modified composition, in light of Ohkawa’s teachings,
remains moldable after its initial extrusion.
Fourth, Appellant disagrees with the Examiner’s finding that Ohkawa
strongly suggests freedom of movement (i.e., lubrication) when using an
interfacial modifier at an operative concentration. Appeal Br. 23. According
to Appellant, Ohkawa simply teaches that “using an amount of water
repellant agent in excess of that needed to reactively couple the particle to
polymer results in a failed material.” Id. at 20 (citing Ohkawa 8:10–14
(“When the amount of the water repellent agent is too small, no sufficient
coupling effect can be exhibited between the surface of the filler and the
matrix phase so that the resultant molding composition would be poor in the
moldability.”)).
We do not find this argument persuasive. To the extent that using too
much coupling agent results in a failed material, Ohkawa teaches that it is
because there is “excessively strong . . . lubrication between the filler surface
and the matrix phase.” Ohkawa 8:16–17. As the Examiner persuasively
explains, if the coupling reagent were reactive, the presence of too much of
it “would just result in further crosslinking,” which is not the problem that
Ohkawa describes. Answer 24.
Moreover, we disagree that Ohkawa’s reference to “coupling,” and a
“sufficient coupling effect” imply that there is reactive bonding between the
particles and the polymer matrix. e passage in question states that
“sufficient coupling effect” is needed to prevent the resultant molding
composition from having “poor . . . moldability.” See Ohkawa 8:10–14.
Elsewhere, Ohkawa teaches that the water repellent agent leads to “greatly
improved affinity between the surface of the filler particles and the matrix
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polymer. Accordingly, the inventive molding composition has good
moldability.” Ohkawa 10:49–52. us, Ohkawa teaches that the coupling
effect, or this affinity between the particles and the polymer caused by the
water repellent agent, improves moldability rather than destroys it.16
Fifth, Appellant argues that, even assuming that Ohkawa’s water
repellent agent would result in greater freedom of movement, “the Examiner
has failed to clearly articulate a reason for a person of ordinary skill in the
art to include [such an agent] in the methods taught by Ando.” Appeal Br.
23. According to Appellant, Ando teaches a coupling agent for promoting
interfacial adhesion, whereas an interfacial modifier of the claimed invention
would be absent of any strong bonds between the particles and the polymer
phase. See id. at 23–26 (citing Ando C ¶ 49; Williams 2014 Decl. ¶¶ 8–9,
Figs. 3, 5). us, Appellant argues that the Examiner hasn’t articulated a
reason to combine Ando with Ohkawa, and that Ando teaches away from
using a coupling agent that allows for greater freedom of movement.
We disagree. As we discuss above, Ando’s reference to interfacial
“adhesion” would not have suggested to a person of ordinary skill in the art
that there must be reactive bonding between the particles and the resin.
Rather the evidence suggests that this refers to the same coupling effect
(Ohkawa 8:10–14), affinity (Ohkawa 10:49–52), or “improved

16 Appellant’s Specification also refers to a “coupling” phenomenon.
According to the Specification, “[t]he metal particulate can be coupled to the
polymer phase . . . . In general the mechanism[s] used to couple metal
particulate to polymer include solvation, chelation, coordination bonding
(ligand formation), etc.” Spec. 34:14–18 (emphasis added). e
Specification also describes working interfacial modifiers as “coupling
agents.” Spec. 40.
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compatibility” (Answer 23) that improves moldability, and does not
necessarily require reactive bonding between the particles and the polymer.
Whether Ando teaches pre-treating the metal particles
Appellant argues that “the Examiner failed to identify any teaching in
Ando, Economy, or Ohkawa of pre-treating a metal particulate to form a
coating of interfacial modifier, as claimed.” Appeal Br. 26. Appellant
disputes the Examiner’s interpretation of Ando as describing a process in
which one first mixes the metal particles with the coupling agent, and then
combines this mixture with the polymer. Id. 26–28. According to Appellant,
Ando is internally inconsistent and ambiguous as to the order of mixing. Id.
at 27–28 (citing Ando B, 1 (translator noting an ambiguity)). e passage
reads as follows:
[0053] In a separate stage from that of the resin pellets
described above, heavy metal comprising a mixture of, for
example, tungsten large particle diameter heavy metal 4 and
small particle diameter heavy metal 5 mixed together in
suitably-selected proportions, and a titanium-based coupling
agent for enhancing the interfacial adhesion between the heavy
metal surface and the molecules of the polymer resin, are mixed
together. Specifically, the titanium-based coupling agent is
dissolved by mixing with n-propyl alcohol for about 1 hour at a
temperature of 50°, and then added to resin pellets. Next, this
mixture obtained by adding the coupling [agent]17 to the heavy
metal is dried in a dryer.
[0054] e mixture of coupling agent and heavy metal, plus the
resin pellets formed by adding elastomer, biodegradable

17 Ando A adds the word “agent” here. See Ando A ¶ 53; see also Ando B, 1
(stating that the omission of “agent” here was “clearly a misprint”).
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additive, and plasticizer to the polymer resin are then mixed
together using a powder mixer. . . .18
Ando B ¶¶ 53–54 (emphasis added). Appellant argues that we should read
the passage as teaching “that the heavy metal and coupling agent are
admixed with the resin pellets,” not that one should coat the metal with the
coupling agent. Appeal Br. 28.
e Examiner recognizes that paragraph 53 is ambiguous, but
determines that paragraph 54 clears up the ambiguity by stating “that it is the
mixture of coupling agent and heavy metal that is then mixed with the resin
pellets.” Answer 27. We agree with the Examiner. According to the
translator of Ando B, the second (emphasized) sentence of paragraph 53 can
be interpreted either of two ways: either (1) “the coupling agent was added
to the heavy metal rather than to resin pellets,” or, alternatively, (2) “the
coupling agent was added to resin pellets and then these added to the heavy
metal.” Ando B, 1. e context supports the translator’s first interpretation,
because in three of the surrounding sentences (sentences 1 and 3 of
paragraph 53; sentence 1 of paragraph 54), Ando refers to mixing the metal
particles with the coupling agent. Based on the record before us, we
determine that this passage in Ando, despite its ambiguity, is sufficient to

18 Ando A translates this sentence as “Next, this mixture of coupling agent
and heavy metal is blended in a powder mixer with the resin pellets, in
which an elastomer, biodegradable additive, and plasticizer have been added
to the polymer resin and molded.” Ando A ¶ 54. Similarly, Ando C reads,
“Next, the mixture comprising a coupling agent and a heavy metal is mixed
together, in a powder mixer, with the resin pellets formed by adding an
elastomer, a biodegradable additive and a plasticizing agent to a polymeric
resin.” Ando C ¶ 54.
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teach particle pre-treatment to a person of ordinary skill in the art at the time
of invention.19
Whether Ando teaches the recited circularity of claim 68
We reproduce Figure 2 of Ando below:

Ando’s Figure 2 “is a semi-sectional view of a small-arms bullet”
comprising a core material 3, “large/small particle diameter heavy metal 4,
5,” and a coupling agent inside jacket 2. Ando B ¶ 28.

19 Although the Examiner did not include this as part of the rejection,
Ohkawa also teaches pre-treating the particles. See Ohkawa 7:62–8:3 (“ e
procedure for the surface treatment of the [metal filler] with the water
repellent agent is not particularly limitative according to any known method
conventionally undertaken for the surface treatment of a powdery material. A
preferable method . . . is to use a Henschel mixer in which the water
repellent agent is sprayed on to the filler under agitation and thoroughly
mixed together.”). Because Ando teaches pre-treatment, we need not rely on
this teaching in Ohkawa for the purpose of this decision.
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Appellant argues that the Examiner cannot rely on this figure for the
circularity limitations, because “Ando does not suggest that the drawings are
to scale.” Appeal Br. 28 (citing Hockerson-Halberstadt, Inc. v. Avia Group
Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000)). Also, Appellant argues that Ando
suggests that the particles have surface irregularity. Id. (citing Ando C ¶ 47).
In response, the Examiner agrees that “[t]he drawings are not to scale
but the particles are shown to be round and therefore [this] suggests the
claimed circularity and aspect ratio, which do not necessarily provide for
spherical particles. Also, Ando does not teach that the particles are flakelike
or fibrous.” Answer 28.
A rejection cannot rely on a drawing to “define the precise proportions
of the elements” or to “show particular sizes if the specification is
completely silent on the issue.” Hockerson-Halberstadt, 222 F.3d at 956.
However, this does not “mean that things patent drawings show clearly are
to be disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). Here,
Figure 2 clearly shows spherical particles. Moreover, the Specification refers
to their “diameter.” See Ando A ¶ 28. We disagree with Appellant that
paragraph 47 of Ando discloses surface irregularity in the particles. Rather, it
discloses that if the “large diameter” particles 4 appear at the surface of core
3, “the core surface” (not the individual particles) becomes irregular. Ando A
¶ 47.
us, a preponderance of the evidence supports the Examiner’s
determination that a person of ordinary skill in the art would have
understood Ando to teach that the particles may be substantially spherical
within the limitations of claim 68.
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Whether Economy is a non-analogous reference
Appellant argues that Economy is a non-analogous reference. See
Appeal Br. 20, 29–30. According to Appellant, Economy is not within the
same field of endeavor as the claimed invention, and not reasonably
pertinent to the problem faced by the inventor, because it “is directed to
orienting liquid crystal material,” and it “is not directed to the extrusion of a
composite.” Id. at 29.
is argument is not persuasive of reversible error in the Examiner’s
rejection. To the extent that the reference is in a different field, a reference
may still be analogous if it is “reasonably pertinent to the particular problem
with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004) (citation omitted). e Examiner cites Economy as evidence of
“known shear rates in extrusion processes.” Answer 28. Moreover, as the
Examiner persuasively explains, these common shear rates “are not
dependent on whether the material being extruded is filled or unfilled but
rather on the viscosity of the material being extruded.” Id. at 29. Appellant
does not offer evidence or arguments to rebut this in the Reply Brief.
In addition, claims 56 and 73 recite a very broad range for the shear
rate, “from about 1 sec.−1 to about 500 sec.−1” Appeal Br. Claims App’x 1, 4.
ere is substantial overlap between this range and the broad typical range
that Economy discloses (100–10,000 sec.−1). Economy 2:49–51. erefore, a
preponderance of the evidence on this record supports the Examiner’s
finding that Economy is reasonably pertinent to the problem faced by the
inventor, and thus Economy is analogous art.
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For the above reasons, we sustain the Examiner’s rejection of claims
56, 57, 59, 61, 63–65, 68–73, 78, 80–83, and 88 over Ando, Economy, and
Ohkawa (Rejection 1).
B. Rejection 2 (Ando, Suezaki, Economy, and Ohkawa)
e Examiner’s second ground of rejection is substantially the same
as the first, except that the Examiner relies on Suezaki, rather than solely on
Ando, for teaching pre-treatment of the metal particles. Action 6–7.
According to the Examiner, it would have been obvious to pre-treat the
particles in Ando because Suezaki teaches “that a coupling agent can be
attached to particulate in a plurality of known ways (including mixing the
coupling agent first with the particulate).” Id. at 7.
In addition to the arguments with respect to the first rejection,
Appellant argues that “the Examiner did not articulate why the person [of
ordinary skill in the art] would have been motivated to ‘mix the coupling
agent first with metal particulate’ from among the ‘plurality of known ways’
identified by the Examiner to attach the coupling agent.” Appeal Br. 31.
We do not find this argument persuasive of reversible error. As the
Examiner explains, Suezaki describes three alternatives for attaching the
coupling agent to the surface of the particles, and one of those options is pre-
treating the particles before adding the polymer. See Answer 29–30. at
Suezaki discloses other alternatives does not nullify its disclosure of pre-
treatment. Cf. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (“ at the [prior art reference] discloses a multitude of effective
combinations does not render any particular formulation less obvious.”); In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“ e prior art’s mere
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disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives.”)
For the above reasons, we sustain the Examiner’s rejection of claims
56, 57, 59, 61, 63–65, 68–73, 78, 80–83, and 88 over Ando, Suezaki,
Economy, and Ohkawa (Rejection 2).
C. Rejection 3 (Sakaki, Economy, and Ohkawa)
e Examiner finds that Sakaki teaches mixing and compounding a
composite material to form a wheel weight with the composition recited in
the independent claims, including the use of “titanate-, aluminum-, and
silane-based coupling agents to increase the affinity of the tungsten powder
to the resin.” Answer 10 (citing Sakaki 5:31–37).
e remainder of the rejection is substantially the same as the first
ground of rejection, discussed above in part A. Regarding the shear rate
range recited in claims 56 and 73, the Examiner cites Economy as evidence
“that conventional process[ing] techniques such as extrusion” operate at a
shear rate within the recited range, and that temperature is a result-effective
variable. Action 10 (citing Economy 2:49–63); see also Answer 28–29, 33.
According to the Examiner, Sakaki “fails to disclose . . . that the
interfacial modifier allows for greater freedom of movement between
particles.” Action 10. However, the Examiner relies on Ohkawa for this
teaching, based on the same rationale as outlined in part A. See id. at 11–12.
Because Ohkawa teaches that coupling agents “are added to metallic filler in
a polymer matrix in order to improve moldability,” the Examiner determines
that “it would have been obvious to one of ordinary skill in the art to utilize
a coupling agent . . . that improved moldability, i.e., improved freedom of
movement between particle[s].” Id. at 12.
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In response, Appellant argues that the Examiner did not articulate a
motivation to combine Sakaki and Ohkawa to achieve the recited “greater
freedom of movement” of the particles.20 Appeal Br. 33–34. Appellant
argues the claims as a group. See id. erefore, under 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to independent claim 56. Claims
57, 59, 63, 66, 73, 78, and 79 fall with claim 56.
In making this argument, Appellant reiterates the previous argument,
discussed in part A.1 above, with respect to Ohkawa. Appeal Br. 33.
According to Appellant, Ohkawa’s water repellent agents “would not form
interfacial modifier coatings that allow for greater freedom of movement . . .
after processing and/or in the resultant article.” Id. For the reasons given
above in part A.1, we do not find this argument persuasive.
Second, Appellant argues that, even assuming that Ohkawa’s water
repellent agent would result in greater freedom of movement, “the Examiner
has failed to clearly articulate a reason for a person of ordinary skill in the
art to include [such agents] in the methods taught by Sakaki.” Appeal Br. 34.
According to Appellant, “Sakaki teaches using a coupling treatment ‘to
enhance the affinity’ of a tungsten powder ‘with the resin,’” unlike the
claimed invention. Id. (citing Sakaki 5:31–33).
We disagree that Sakaki’s resulting “affinity” between the powder and
the resin is incompatible with greater freedom of movement of the particles
in the resin. Sakaki’s use of the term affinity is consistent with Ando’s and
Ohkawa’s use of similar terminology as discussed above in part A.1. It is

20 Appellant also reiterates its argument, which we addressed above in part
A.4, that Economy is not analogous art. Appeal Br. 34–35. Because it is
substantially the same argument, we need not repeat our analysis here.
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also consistent with the teachings in Appellant’s Specification that “an
interfacial modifier . . . provides an exterior coating on the particulate
promoting the close association of polymer and particulate,” Spec. 10:12–14
(emphasis added), that it may “improve the association of the particulate
with the polymer,” id. at 4:14–15 (emphasis added), and that it may
“overcome the forces that prevent the matrix from forming a substantially
continuous phase of the composite,” id. at 10:9–11. us, the preponderance
of the evidence supports the Examiner’s finding that a person of ordinary
skill in the art would have understood Sakaki’s use of affinity to describe
“compatibiliz[ing] the particle filler to the polymer in order to disperse the
particles in the polymer.” Answer 32.
Next, Appellant argues that Sakaki “does not specifically identify any
reactive coupling agent other than . . . SIA0591.0.” Appeal Br. 34 (citing
Sakaki 8:31–34). As in its arguments responding to the first rejection,
Appellant argues that SIA0591.0 is a reactive coupling agent that “has the
opposite effect of an interfacial modifier coating that allows for a greater
freedom of movement . . . after processing and/or in the resultant article.” Id.
us, Appellant argues that Sakaki’s disclosure of SIA0591.0 teaches away
from “replacing Sakaki’s ‘coupling agent’ with Ohkawa’s ‘water repellent
agent.’” Id.
is is not persuasive of reversible error. Sakaki teaches that suitable
coupling agents may include, for example, “titanate-, aluminum- and silane-
based coupling agents.” Sakaki 5:33–35. Similarly, as we discuss in part A.1,
Ohkawa teaches numerous options for the water repellent agent, including
titanate-based coupling agents. us, both Ohkawa and Sakaki teach
interfacial modifiers other than SIA0591.0, including some within the class
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of titanate-based interfacial modifiers found in the working examples of the
Specification. See Spec. 40:15–16, Table 1.
In addition, the evidence on this record does not support a
determination that Sakaki or Ohkawa teaches away from the claimed
invention by disclosing SIA0591.0 as a potential reactive coupling agent. We
recognize that Sakaki’s Example 1 uses SIA0591.0 as the coupling agent,
and that the 2010 Williams Declaration presents evidence that an attempt to
reproduce Example 1 failed to achieve a moldable material. See Appeal Br.
16–17; Williams 2010 Decl. ¶¶ 6–13. is appears to contradict Sakaki’s
disclosure, in Example 1, that one may blend SIA0591.0 in a mixture of
particles and polymer, pelletize them, and then use the pellets in subsequent
injection molding to form a balance weight. See Sakaki 8:47–63.
However, even if Sakaki’s Example 1 is mistaken or inoperative
(which we need not decide here), “a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under § 103.” Symbol
Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). A
preponderance of the evidence suggests that an ordinarily skilled artisan
would have been motivated, and able, to select a suitable interfacial modifier
other than SIA0591.0 to achieve a moldable material according to the
teachings of Sakaki and Ohkawa. See, e.g., Sakaki 8:5–13 (describing the
production of a balance weight by “integrally molding a metal clip and a
weight made of a resin composition having high specific gravity,” or by
“covering a previously produced metal clip with a resin composition having
high specific gravity to form a weight portion. On molding, there can be
used conventionally known various methods such as injection molding and
compression molding.”)
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Because Appellant has not identified reversible error, we sustain the
Examiner’s rejection of claims 56, 57, 59, 63, 66, 73, 78, 79 over Sakaki,
Economy, and Ohkawa (Rejection 3).
D. Rejection 4 (Sakaki, Economy, Ohkawa, and Ando)
e Examiner’s fourth ground of rejection is substantially the same as
the third ground, except that as with the first rejection, the Examiner cites
Ando for the circularity and aspect ratio limitations of claim 68. Action 13–
14. According to the Examiner, “it would have been obvious from the
teachings of Ando to utilize spherical particles in the composite of Sakaki
given that they are both drawn to the same field of endeavor.” Id. at 13.
Appellant refers to the arguments made with respect to the rejections
of claims 56, 57, 59, 63, 66, 73, 78, and 79 over Sakahi in view of Economy
and Ohkawa, specifically that the cited documents do not teach or suggest
the use of an interfacial modifier coating that allows for a greater freedom of
movement of the pre-treated metal particulate within the polymer phase, and
that a person of ordinary skill in the art would not have looked to the
teachings of Economy. See Appeal Br. 33–35.
For the reasons we discussed above in part A.3, these arguments are
not persuasive of reversible error. us, we sustain the Examiner’s rejection
of claims 68–72 and 89 over Sakaki, Economy, Ohkawa, and Ando
(Rejection 4).
E. Rejection 5 (Sakaki, Economy, Ohkawa, and Bray)
e Examiner’s fifth ground of rejection is also substantially the same
as the third ground, except that the Examiner cites Bray for the limitation in
claim 80 that the metal particulate is “iron-comprising.” Appeal Br. Claims
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App’x 4. According to the Examiner, “Sakaki fails to disclose . . . that the
metal particulate comprises iron,” Action 15, but discloses that the particles
can be tungsten, id. at 14. However, “Bray teaches that base metals such as
tungsten can be alloyed with other metals such as iron” in “a high density
composite material suitable for use in wheel weights.” Id. at 16. us, the
Examiner determines that “it would have been obvious to one of ordinary
skill in the art to alloy the tungsten of Sakaki with the alloying metal such as
iron taught by Bray as a way to adjust density.” Id. at 17.
Appellant reiterates substantially the same arguments as for the third
rejection, and also argues that Bray cannot remedy the alleged defect of that
rejection in failing to teach “a composite that allows for greater freedom of
movement of the pre-treated metal particulate within the polymer phase after
processing and/or in the resultant article.” Appeal Br. 36. Appellant also
notes that Bray does not teach any particle coating. See id.
is argument is not persuasive of reversible error, for the reasons
given above in part C. In addition, “ e test for obviousness is not . . . that
the claimed invention must be expressly suggested in any one or all of the
references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). us, Bray itself
need not suggest the presence of an interfacial modifier.
For the above reasons, we sustain the Examiner’s rejection of claims
80–83, 88, and 90 over Sakaki, Economy, Ohkawa, and Bray (Rejection 5).
CONCLUSION
For the above reasons, and based on the Examiner’s findings and
conclusions as a whole which we find persuasive, the preponderance of the
evidence supports the Examiner’s conclusion of obviousness, and Appellant
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has not shown reversible error. erefore, we affirm the Examiner’s decision
on all grounds.
DECISION
e Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. §§ 1.136(a)(1)(iv), 41.50(f)
(2018).
AFFIRMED