SAINT-GOBAIN ADFORS

Patent Trials and Appeals Board

Dec 16, 2020

2020001481 (P.T.A.B. Dec. 16, 2020)

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.
14/901,930 12/29/2015 Bohuslav MIKULECKY 463978US99PCT 5556
22850 7590 12/16/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WORRELL, KEVIN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BOHUSLAV MIKULECKY,
PETR HELEMIK, and LUKAS KULHAVY
____________

Appeal 2020-001481
Application 14/901,930
Technology Center 1700
____________

Before CATHERINE Q. TIMM, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–7, 12, and 13. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Saint-Gobain Adfors.
Appeal Br. 2.
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The invention relates generally to a glass fiber mesh fabric coated
with an organic polymer coating based on poly(vinylidene chloride) (PVDC)
for use as reinforcement in External Thermal Insulation Complex Systems
(ETICS). Spec. 1. The invention seeks to modify the PVDC-based coating
by adding formaldehyde-based resins to the PVDC binder. Id. at 2. This
modification “desirably increases the mechanical strength of the resulting
coating thereby allowing reduction of the overall LOI [(loss-on-ignition)]
and in particular reduction of the amount of PVDC required.” Id. Claim 1 is
illustrative of the subject matter claimed and is reproduced below:
1. A glass fiber mesh fabric coated with an organic
polymer coating, wherein the organic polymer coating
comprises:

(i) from 60 wt% to 99.9 wt% of a poly(vinylidene
chloride) (PVDC) or a copolymer thereof; and

(ii) from 0.1 wt% to 4 wt% of a formaldehyde-based
resin selected from the group consisting of a melamine-
formaldehyde resin, a phenol-formaldehyde resin, a urea-
formaldehyde resin and a combination thereof:

wherein the poly(vinylidene chloride) copolymer
comprises from 75 to 98 wt% of vinylidene chloride monomer
units and from 2 to 25 wt% of at least one comonomer selected
from the group consisting of methyl acrylate, ethyl acrylate,
butyl acrylate, methyl methacrylate, acrylonitrile,
methacrylonitrile, an unsaturated carboxylic acid and vinyl
chloride.
Appellant requests review of the Examiner’s rejection of claims 1–3,
5–7, 12, and 13 under 35 U.S.C. § 103 as unpatentable over Graves (US
5,389,716, issued February 14, 1995) and Tutin (US 2011/0054098 A1,
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published Mar. 3, 2011).2 Appeal Br. 7; Final Act. 5; Ans. 3.
Appellant presents arguments for independent claim 1 and dependent
claim 5. See generally Appeal Br. In addition, Appellant relies on a similar
line of argument to address separately the rejection of claims 7, 12, and 13.
See Appeal Br. 17–23. Accordingly, we select claims 1, 5, and 7 as
representative of the subject matter claimed and decide the appealed ground
of rejection based on the arguments Appellant makes in support of the
patentability of 1, 5, and 7.

OPINION
After review of the respective positions the Appellant presents in the
Appeal and Reply Briefs, and the Examiner presents in the Final Action and
Answer, we AFFIRM the Examiner’s prior art rejection of claims 1–7 and
12–16 under 35 U.S.C. § 103 based essentially on the factual findings and
reasons the Examiner presents. We add the following for emphasis.
Claim 1
Claim 1 recites a glass fiber mesh fabric coated with an organic
polymer coating comprising from 0.1 wt% to 4 wt% of a formaldehyde-

2 Appellant notes that the rejections under 35 U.S.C. §§ 102(a)(1) and
102(a)(2) or, in the alternative, under 35 U.S.C. § 103, in the Final Office
Action are moot in view of an Amendment After Final filed May 24, 2019
(Amendment). Final Act. 3; Appeal Br. 7. The Examiner entered the
Amendment in the Advisory Action dated July 11, 2019 (Advisory or Adv.
Act.). In the Advisory, the Examiner indicated that the claims remain
rejected over the combined teachings of Graves and Tutin. Adv. Act. 2. In
addition, the Examiner expressly repeated the obviousness rejection of the
claims over the combined teachings of the aforementioned references. Ans.
3. In view of this, the rejections under 35 U.S.C. §§ 102(a)(1) and
102(a)(2), or under 35 U.S.C. § 103 over Tutin alone, are not before us for
review on appeal.
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based resin selected from the group consisting of a melamine-formaldehyde
resin, a phenol-formaldehyde resin, a urea-formaldehyde resin and a
combination thereof.
The Examiner finds that Graves discloses a coated glass fiber fabric
using glass fiber mats that differs from the claimed invention in that Graves
does not expressly teach (1) a coating comprising formaldehyde-based resin
in the claimed range of amounts and (2) using glass mats in the form of a
mesh fabric to make the coated glass fiber fabric. Final Act. 5, Ans. 6–7.
Regarding difference (1), the Examiner finds that Graves teaches that
the binder composition preferably contains from about 5 to about 50% of the
aldehyde condensation polymer-based resin by weight of the fire resistant
latex and that the proportions of the components of the binder can vary
widely. Ans. 6; Graves col. 3, l. 65–col. 4, l. 4. Based on this disclosure, the
Examiner finds that Graves does not strictly teach 5 percent as a lower limit
for stable compositions and contemplates stable compositions formed with
less than about 5 percent by weight of the aldehyde condensation polymer
based on the weight of the composition. Ans. 6. Thus, the Examiner
determines that it would have been obvious to one of ordinary skill in the art
to arrive at coated fabrics having a coating composition comprising the
claimed 0.1–4 wt% content of a formaldehyde-based resin from Graves’s
disclosure. Ans. 6.
Regarding difference (2), the Examiner finds that Tutin teaches that it
is known to use a scrim (mesh fabric) as a reinforcement component in
cementitious or non-cementitious coatings for masonry (construction and
building industries). Final Act. 5; Tutin Abstr., ¶ 135. The Examiner
determines that it would have been obvious to one having ordinary skill in
the art to replace Graves’s glass matt with a glass matt comprising Tutin’s
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scrim (a mesh fabric) in light of Tutin’s teaching of providing a
reinforcement fabric for use in cementitious or noncementitious coatings for
masonry. Final Act. 5.
Appellant argues that Graves does not disclose or reasonably suggest
glass fiber mesh fabric coated with an organic polymer coating that includes
only 0.1-4 wt% of a melamine-formaldehyde resin, a phenol-formaldehyde
resin, and/or a urea formaldehyde resin. Appeal Br. 8. According to
Appellant, Graves discloses that the aldehyde condensation polymer-based
resin content may vary but discloses that a range of about 5 to about 50% is
satisfactory. Appeal Br. 7–8; Graves col. 3, l. 68–col. 4, l. 4. Appellant also
asserts that Graves directs those of skill in the art to compositions including
much larger amounts of an aldehyde condensation polymer, as demonstrated
by all of Graves exemplary compositions having 20 wt% or 25 wt% of the
aldehyde condensation polymer and 75 wt% or 80 wt% of the fire resistant
latex (vinylidene chloride/butadiene or ethylene/vinyl chloride). Id. Thus,
Appellant asserts that Graves does not disclose any benefit to reducing the
amount of the aldehyde condensation polymer. Id. at 8–9.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
As the Examiner explains, Graves’s broad range of about 5 to about
50% of the aldehyde condensation polymer-based resin is a preferred
embodiment. Ans. 6; Graves col. 3, ll. 19–23 (“The binder composition of
the present invention preferably contains from about 5 to about 50% of the
aldehyde condensation polymer-based resin” (emphasis added)). Moreover,
it is well established that a prima facie case of obviousness exists where the
prior art and claimed ranges overlap, as well as in those cases where the
claimed range and the prior art range, though not overlapping, are
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sufficiently close that one skilled in the art would have expected them to
have the same properties. See In re Peterson, 315 F.3d 1325, 1329 (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. We have also held that a prima facie case
of obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.”); see also Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
Here, the lower endpoint for Graves’s broad range of the amount of
aldehyde condensation polymer-based resin (about 5%) is close enough to
the higher endpoint for the claimed range of the amount of aldehyde
condensation polymer-based resin (formaldehyde-based resin) (4.0 %) that
one skilled in the art would have reasonably expected Graves’s organic
polymer coating as well as the fibrous layer comprising the aforementioned
coating to have the same properties as the claimed organic polymer coating
and fibrous material absent a showing to the contrary. Therefore, a prima
facie case of obviousness exists.
Appellant argues that Graves discloses glass mats for use in the
building and construction industries while Tutin relates to dedusting agents
for fiberglass products. Appeal Br. 9–10; Graves col. 1, ll. 1–14; Tutin ¶ 3.
Appellant contends that there is no reason why a skilled artisan would have
been motivated to modify Graves’s fiber mats to be in the form of a scrim as
alleged by the Examiner because Tutin does not even mention fire-resistant
lattices. Appeal Br. 10–11.
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These arguments are also unpersuasive of reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents. Ans. 7.
Moreover, the Specification discloses:
[g]lass fiber mesh fabrics are currently used in External
Thermal Insulation Complex Systems (ETICS) to reinforce the
render coating and facilitate application thereof to the
underlying thermal insulation product (foam, glass wool, etc.).
Such glass fiber mesh fabrics are generally coated with rubber
coatings, typically SBR rubber, to provide the fabric with
mechanical strength and to protect the glass fibers against the
alkalinity of the render composition.

Spec. 1 (emphasis added). Therefore, Appellant acknowledges that it was
known in the art to make coat glass fiber mesh fabrics with an organic
polymer coating for use in External Thermal Insulation Complex Systems.
We also note that Tutin indeed discloses a fiber mesh fabric (scrim) as
suitable for insulation products.
Thus, Appellant has not explained persuasively why one skilled in the
art would have found the well-known glass fiber mesh fabric to be
unsuitable for use to form Graves’s fire resistant fibrous mat. Appellant has
not explained adequately why one skilled in the art, using no more than
ordinary creativity, would not have been capable of modifying Graves’s fire
resistant fibrous mat by replacing Graves disclosed fibrous mat with a
well-known glass fiber mesh fabric and still reasonably expect that the
modified fibrous mat would maintain its fire resistant characteristics. See
Spec. 1; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming
skill on the part of one of ordinary skill in the art); In re O’Farrell, 853 F.2d
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894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required
is a reasonable expectation of success.”).
Appellant argues that the Examples in the Specification evidence that
the inventive compositions demonstrate improved LOI’s and gross heat of
combustion over the comparative compositions. Appeal Br. 6 (see Table
summarizing the Examples disclosed in the Specification); Spec. 5–7
(Examples).
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
the Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant must establish the unexpected results with factual
evidence; attorney statements are insufficient to establish unexpected results.
See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a
showing of unexpected results with evidentiary support must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); see also In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We have considered Appellant’s alleged evidence of unexpected
results and agree with the Examiner’s analysis that the evidence is
insufficient to show nonobviousness. Ans. 8–9.3

3 We consider the Examiner’s and Appellant’s positions with respect to the
showing of unexpected results presented for claim 5 to be pertinent to the
patentability of claim 1. Appeal Br. 14–15; Ans. 8–9.
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It is unclear whether the showing that Appellant relies upon compares
the inventive composition to the closest prior art (Graves). Appellant
contends that Comparative Composition D meets the compositional
requirements for Graves’s composition, and comprises 49.8% of a
melamine-formaldehyde resin that satisfies Graves’s requirement for a
composition having about 5 to about 50% of an aldehyde condensation
polymer. Appeal Br. 14–15. As the Examiner asserts, however, Appellant
has not adequately explained why a comparative composition closer to the
higher end of Graves’s recitation of about 5 to about 50% of an aldehyde
condensation polymer is representative of the entire range of compositions
encompassed by Graves’s disclosure. Ans. 9. Therefore, Appellant has not
adequately established that the showing in the Specification compares the
claimed invention against the closest prior art (Graves).
Similarly, the two inventive Examples used to demonstrate
unexpected results are limited to a single formaldehyde resin and a single
content of that resin: 3% of a melamine-formaldehyde resin. Spec. 6.
Appellant does not explain why the inventive compositions having 3% of a
melamine-formaldehyde resin used in the showing are representative of the
broad range of compositions encompassed by claim 1.
Thus, on this record, Appellant has not explained adequately why one
of ordinary skill in the art would have found the evidence relied upon
unexpected or why that evidence is reasonably commensurate in scope with
the claims.
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Claim 5
Claim 5 recites that the coated glass fiber mesh fabric has a gross heat
of combustion (PCS) of less than 3.5 MJ/kg.
The Examiner determines that, absent a showing to the contrary, one
skilled in the art would have reasonably expected that the coated glass fiber
mesh fabrics from the combined teachings of the cited art and the claimed
invention to the same properties because they are made from similar
materials and have similar structures. Final Act. 6.
Appellant relies on the showing based on the Specification Examples
to argue that the claimed PCS value of less than 3.5 MJ/kg is not inherent in
Graves’s compositions. Appeal Br. 14–15. We have already determined
that the showing is insufficient to establish unexpected results for the
claimed compositions. We also determine that the showing is insufficient to
establish that Graves’s compositions do not possess the PCS property of the
claimed invention because the showing does not compare Graves’s
composition against the claimed invention, for the reasons we give above.
Claim 7
Claim 7, dependent from claim 6, recites that the organic polymer
having a Tg lower than 40 °C is selected from the group consisting of a
polyacrylate, a polymethacrylate, a styrene-butadiene copolymer, a
styrene-acrylate copolymer, a poly(vinyl acetate) and a poly( ethylene
viny1acetate) copolymer.
The Examiner finds that Tutin teaches the compounds recited in the
claim. Final Act. 6–7; Tutin ¶ 96.
Appellant argues that the latex binder is outside the scope of the
Graves’s binder because it contains no more than 31 mol % of PVDC.
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Appeal Br. 11–13, 18. Appellant further contends that Graves discloses,
through incorporation by reference of U.S. Patent No. 4,457,969 to Biale,
that “[t]he fire resistance of certain polymers is directly related to the
amount of chlorine contained therein.” Appeal Br. 18; Graves col. 1, ll.
59–64; Biale, col. 1 11. 22–24. Thus, Appellant contends that one skilled in
the art would not have modified Graves fire resistant composition to include
a third polymer selected from the group consisting of a polyacrylate, a
polymethac1ylate, a styrene-butadiene copolymer, a styrene-acrylate
copolymer, a po1y(vinyl acetate) and a poly(ethylene vinyl acetate)
copolymer because it would reduce the chlorine content of Graves’s
composition. Appeal Br. 18–19.
Appellant’s arguments are not persuasive of reversible error. As
Appellant acknowledges in the discussion of Biale (Appeal Br. 18–19), one
skilled in the art recognizes the importance of the presence of chlorine in a
fire resistant composition. Biale col. 1, ll. 22–25. Biale also discloses
providing the PVDC with a plasticizing comonomer that functions to aid
film formation. Biale col. 3, ll. 51–52. Moreover, Graves discloses that a
styrene-butadiene latex having a Tg having less than 25°C is a known
additive for binders used in making coated glass fiber mats. Graves col. 1,
ll. 53–54 (citing to US 4,917,764 to Lalwani). Lalwani discloses that the
addition of this latex to the binder improves the wettability of the binder for
continuous and uniform application of binder to the surface of the mat with
excellent adhesion to the fibers. Abstract; Lalwani col. 2, ll. 4–6; col. 3, ll.
26–31. Thus, based on these disclosures one skilled in the art would have
recognized, that PVDC binders benefit from the addition of these latex
additives for effective use in coating fibrous mat. Given that Graves forms
the coated fiber mat by spraying the binder onto the fibrous mat (Graves col.
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13, ll. 14–17), one skilled in the art would infer reasonably from Graves’s
disclosure that inclusion of an additive to the binder that improves its
adhesion to the fibers of the mat would be desirable. In re Preda, 401 F.2d
825, 826 (CCPA 1968) (holding that, in evaluating references, it is proper to
take into account not only the specific teachings of the references but also
the inferences which one skilled in the art would reasonably be expected to
draw therefrom).
Appellant’s argument that one skilled in the art would not add
additional latexes that would reduce the chlorine content of a fire resistant
composition is also unavailing in view of the above noted discussion. Given
the knowledge in the art, Appellant has not explained adequately why one
skilled in the art, using no more than ordinary creativity, would not have
been capable of modifying Graves’s fire resistant coating composition with
sufficient additives to improve its wettability for adhesion to the fibers
without detrimentally affecting the fire resistance properties of the
composition. See KSR, 550 U.S. at 421; Sovish, 769 F.2d at 743.
Accordingly, we affirm the Examiner’s prior art rejection of claims
1–3, 5–7, 12, and 13 under 35 U.S.C. § 103 for the reasons the Examiner
presents and we provide above.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–7, 12,
13
103 Graves, Tutin 1–3, 5–7,
12, 13

Appeal 2020-001481
Application 14/901,930
13
TIME PERIOD
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) (2017).

AFFIRMED