SI GROUP, INC.

Patent Trials and Appeals Board

Jan 27, 2022

2021001187 (P.T.A.B. Jan. 27, 2022)

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. 15/125,534 09/12/2016 Timothy Edward BANACH 29521.0502 6067 154485 7590 01/27/2022 COZEN O'CONNOR (SI Group) 1200 19th Street, N.W., Third Floor Washington, DC 20036 EXAMINER MCKINNON, LASHAWNDA T ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 01/27/2022 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): egeorge@cozen.com nyipdocketing@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TIMOTHY EDWARD BANACH, GARY ROBIDEAU, L. SCOTT HOWARD, and GENNARO BARBIERO ____________ Appeal 2021-001187 Application 15/125,534 Technology Center 1700 ____________ Before N. WHITNEY WILSON, JENNIFER R. GUPTA, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 3, and 5-21.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies SI GROUP, INC. as the real party in interest. Appeal Brief filed June 22, 2020 (“Appeal Br.”), 2. 2 Final Office Action entered November 4, 2019 (“Final Act.”), 1. Appeal 2021-001187 Application 15/125,534 2 CLAIMED SUBJECT MATTER The Appellant claims a method for chemically bonding a phenolic resin with a synthetic fabric material (independent claim 1), a synthetic- fabric reinforced rubber composition (independent claim 16), and a synthetic-fabric reinforced article (independent claim 18). Appeal Br. 3, 5. Claim 1 illustrates the subject matter on appeal, and reads as follows: 1. A method for chemically bonding a phenolic resin with a synthetic fabric material, comprising: contacting a phenolic fatty acid compound with a synthetic fabric material having a functional group reactive to a carboxylic acid group of a fatty acid, to react the carboxylic acid-reactive functional group of the synthetic fabric material with the carboxylic acid group of the phenolic fatty acid compound, to introduce a hydroxy phenyl functional group into the synthetic fabric material; and reacting the hydroxy phenyl functional group contained in the synthetic fabric material with a phenolic resin or a phenolic crosslinker composition capable of forming a phenolic resin, to chemically bond the phenolic resin with the synthetic fabric material. Appeal Br. 14 (Claims Appendix) (emphasis and spacing added). Similar to claim 1, independent claims 16 and 18 both recite, in part, a synthetic fabric that has been modified by a phenolic fatty acid compound to contain a hydroxy phenyl functional group. REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered November 1, 2019 (“Ans.”) (Compare Final Act. 2-5, with Ans. 3): Appeal 2021-001187 Application 15/125,534 3 I. claims 1, 5, 7-9, 12, and 18 under 35 U.S.C. § 102(a)(1) as anticipated by Nanaumi;3 II. claims 3, 6, 13-15, and 20 under 35 U.S.C. § 103 as unpatentable over Nanaumi; and III. claims 10, 11, 16, 17, 19, and 21 under 35 U.S.C. § 103 as unpatentable over Nanaumi in view of Rutherford.4 FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of the Appellant’s contentions, we reverse the Examiner’s rejection of claims 1, 5, 7-9, 12, and 18 under 35 U.S.C. § 102(a)(1), and rejections of claims 3, 6, 10, 11, 13-17, and 19-21 under 35 U.S.C. § 103, for reasons set forth in the Appeal Brief and the Reply Brief, and below. Rejection I We turn first to the Examiner’s rejection of claims 1, 5, 7-9, 12, and 18 under 35 U.S.C. § 102(a)(1) as anticipated by Nanaumi. The Examiner finds that Nanaumi discloses a synthetic fabric material having functional groups “reactive to a carboxylic acid group of a fatty acid.” Final Act. 2. The Examiner finds that Nanaumi discloses contacting the synthetic fabric material with the reaction product of a phenol and a vegetable oil, to introduce hydroxyl phenyl functional groups into the synthetic fabric material. Id. The Examiner determines that the “hydroxyl phenyl functional group[s] contained in the synthetic fabric material” are “capable of” chemically bonding with a phenolic resin. Id. 3 Nanaumi et al., US 5,380,789, issued January 10, 1995. 4 Rutherford et al., US 2006/0169408 A1, published August 3, 2006. Appeal 2021-001187 Application 15/125,534 4 The Appellant argues that Nanaumi does not disclose reacting a synthetic fabric material with “a phenolic fatty acid compound” as required by independent claims 1 and 18. Appeal Br. 7-10. The Appellant’s argument identifies reversible error in the Examiner’s rejection, for reasons that follow. Nanaumi discloses that its invention relates to the discovery that “use of a specific catalyst, namely a perfluorosulfonic acid or an anhydride thereof, enables even vegetable oils comprising mainly of linoleic acid or linolenic acid to react with phenols without causing the hydrolysis of the vegetable oils to low molecular weight components.” Nanaumi col. 2, ll. 19-24. Nanaumi discloses that its invention uses this discovery to provide “a method of preparing a vegetable oil-modified phenolic resin, comprising allowing a phenol to react with a non-conjugated drying oil in the presence of a super acid selected from the group consisting of a perfluorosulfonic acid, a perfluorosulfonic anhydride and a mixture thereof to form a phenol- added vegetable oil, and allowing the phenol-added vegetable oil to react with an aldehyde in the presence of an alkaline catalyst under weakly alkaline conditions to form a vegetable oil-modified phenolic resin.” Nanaumi col. 2, ll. 5-14. Nanaumi emphasizes that reaction of the phenol with the vegetable oil forms a “phenol-added vegetable oil without causing hydrolysis” of the oil. Nanaumi Abstr.; see also id. at col. 1, l. 64-col. 2, l. 2; col. 2, ll. 19-24; col. 3, ll. 35-45; col. 8, ll. 56-60. Nanaumi thus discloses reacting a phenol with a vegetable oil- without hydrolyzing the vegetable oil-to produce a “phenol-added vegetable oil,” rather than producing a “phenolic fatty acid compound” as recited in claims 1 and 18. As the Appellant explains, one of ordinary skill Appeal 2021-001187 Application 15/125,534 5 in the art readily understands that vegetable oils are not fatty acids, but, rather, are triglycerides-esters derived from glycerol and fatty acids- whereas fatty acids are carboxylic acids with an aliphatic chain. Appeal Br. 7 (citing Merriam-Webster.com, “vegetable oil: an oil of plant origin, especially: a fatty oil from seeds or fruits,” and “triglyceride: any of a group of lipids that are esters formed from one molecule of glycerol and three molecules of one or more fatty acids, are widespread in adipose tissue, and commonly circulate in the blood in the form of lipoproteins.”). Significantly, the Appellant’s Specification also explicitly defines a “phenolic fatty acid compound” as “a phenolic compound with the phenol benzene ring alkylated by the aliphatic chains of a fatty acid.” Spec. ¶ 32 (emphasis added). Although Nanaumi discloses that suitable vegetable oils for use in its method include those “comprising mainly of linoleic acid or linolenic acid,” one of ordinary skill in the art would understand this disclosure to refer to the particular fatty acids from which the vegetable oils are derived, rather than indicating that the vegetable oils themselves are fatty acids. See, e.g., Biology Dictionary, Fatty acid: “Fatty acids are comprised of hydrocarbon chains terminating with carboxylic acid groups,” https://biologydictionary. net/fatty-acids/; Dictionary.com, Vegetable oil: “any of a large group of oils that are esters of fatty acids and glycerol, obtained from the leaves, fruit, or seeds of plants,” https://www.dictionary.com/browse/vegetable-oil. Put another way, one of ordinary skill in the art readily understand that vegetable oils are distinct from fatty acids, and understands that vegetable oils are derived from fatty acids. Nanaumi’s disclosures must be interpreted taking into consideration this common knowledge in the art. In Appeal 2021-001187 Application 15/125,534 6 re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) (“[A] prior art reference must be ‘considered together with the knowledge of one of ordinary skill in the pertinent art.’”) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013) (“As KSR [Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)] established, the knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious”). Furthermore, as discussed above, Nanaumi repeatedly indicates that its reaction of a vegetable oil with a phenol does not cause hydrolysis of the vegetable oil. One of ordinary skill in the art would understand this disclosure in Nanaumi to indicate that the reaction for forming “a phenol- added vegetable oil” by reacting a phenol with a vegetable oil does not hydrolyze the vegetable oil to yield fatty acids, and, therefore, would not produce a phenolic fatty acid. KSR, 550 U.S. at 418 ([A]n obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also In re Preda, 401 F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). Nonetheless, the Examiner finds in the Answer that “it is abundantly clear that Nanaumi teaches the claimed phenolic fatty acid compound” because “Nanaumi teaches the vegetable oil used in his invention is linseed oil,” and “linseed oil is made of linoleic acid and linolenic acid among other Appeal 2021-001187 Application 15/125,534 7 things. In fact, linseed oil is made of over 50% linolenic add which is a fatty acid comprising carboxylic acid group.” Ans. 8-9 (citing Ramaprasad et al., US 2004/0191294 A1, published September 30, 2004 and Malaki Nik et al., US 2015/0030674 Al, published January 29, 2015). In so finding, however, the Examiner actually acknowledges that linseed oil is distinct from both linoleic acid and linolenic acid by indicting that “linseed oil is made of linoleic acid and linolenic acid among other things.” And one of the evidentiary reference the Examiner cites to support the Examiner’s position (Ramaprasad) actually explicitly discloses that linseed oil is a source of α-linolenic acid. Ramaprasad ¶ 2; see also id. ¶ 29 (disclosing α-linolenic acid “obtained from” linseed oil) and ¶¶ 92, 102 (disclosing that linseed oil is a natural “fatty acid source”). As discussed above, one of ordinary skill in the art readily understands that vegetable oils, such as linseed oils, are triglycerides (esters) derived from fatty acids and glycerol, and further understand that hydrolysis of vegetable oils yields fatty acids, such as α-linolenic acid, and glycerol. Contrary to the Examiner’s findings, Nanaumi’s disclosure of reacting a phenol with a vegetable oil-without hydrolyzing the vegetable oil-to produce a “phenol-added vegetable oil,” therefore, does not constitute disclosure of producing a “phenolic fatty acid compound” as recited in claims 1 and 18. Consequently, on the record before us, the Examiner does not provide a sufficient factual basis to establish that Nanaumi discloses a synthetic fabric modified by a phenolic fatty acid, as required by claims 1 and 18. We, accordingly, do not sustain the Examiner’s rejection of claims 1 and 18, and claims 5, 7-9, and 12, which each depend from claim 1, as Appeal 2021-001187 Application 15/125,534 8 anticipated by Nanaumi. Nor do we sustain the Examiner’s rejection of claims 6, 13-15, and 20, which each depend from either claim 1 or 18, under 35 U.S.C. § 103 as unpatentable over Nanaumi because this rejection suffers from the same reversible error as the Examiner’s anticipation rejection. We also do not sustain the Examiner’s rejection of claims 10, 11, 16, 17, 19, and 21 as unpatentable over Nanaumi in view of Rutherford, because the Examiner does not rely on Rutherford for any disclosure that remedies the deficiencies of the Examiner’s reliance on Nanaumi. Final Act. 5. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 5, 7-9, 12, 18 102(a)(1) Nanaumi 1, 5, 7-9, 12, 18 3, 6, 13-15, 20 103 Nanaumi 3, 6, 13-15, 20 10, 11, 16, 17, 19, 21 103 Nanaumi, Rutherford 10, 11, 16, 17, 19, 21 Overall Outcome 1, 3, 5-21 REVERSED