3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Mar 23, 2020

14119252 - (D) (P.T.A.B. Mar. 23, 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.
14/119,252 11/21/2013 Steven G. Corveleyn 66806US004 6582
32692 7590 03/23/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/23/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN G. CORVELEYN
____________

Appeal 2019-004762
Application 14/119,252
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, 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, 3–14, 19, and 22–26. 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(a). Appellant identifies 3M Company as the real party in interest.
Appeal Br. 2.
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Application 14/119,252

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BACKGROUND
The invention relates to fluoroelastomer-polyamide composite
materials, such as may be used as seals in automobile fuel systems. Spec. 1,
14. According to the Specification, “the inventor has found that strong
direct bonds between fluoropolymers and polyamides can be formed by
using peroxide fluoropolymers having a low temperature retraction (TR-
10).” Id. at 2.
Independent claims 1 and 13 read:
1. A composite material comprising a first component
directly bonded to a second component, the first component
comprising a peroxide cured fluoroelastomer having a
temperature retraction TR-10 of -l 9°C or lower as measured
according to ASTM D 1329 and the second component
comprising a polyamide resin having a heat deflection
temperature (HDT) of at least 130°C under a load of O.45 MPa
measured according to ASTM D648, wherein the peroxide
cured fluoroelastomer is partially fluorinated.

13. A method of making a composite material comprising
i) providing
a) a first component comprising a peroxide curable
fluoroelastomer having a temperature retraction TR-10 of -19°C
or less and further comprising at least one peroxide curing agent
wherein the peroxide curable fluoroelastomer is partially
fluorinated;
b) a second component comprising a polyamide resin having a
heat deflection temperature (HDT) of at least I30°C under a
load of 0.45 MPa measured according to ASTM D648,
ii) forming a direct bond between first and second component
by contacting the first component with the second component
and curing the fluoroelastomer.
Appeal Br. 22, 23 (Claims Appendix).
Each remaining claim on appeal depends from claim 1 or 13.
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REJECTIONS2
I. Claims 1, 3–7, 9–14, 19, 22, 23, 25, and 26 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Grosse-Puppendahl3 and Amemiya.4
II. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over
Grosse-Puppendahl, Amemiya, and Schofield.5
III. Claims 1, 3–7, 9–14, 19, and 22–26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Grosse-Puppendahl and Fukushi.6
IV. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over
Grosse-Puppendahl, Fukushi, and Schofield.
OPINION
Rejection I: obviousness over Grosse-Puppendahl and Amemiya
With regard to the Examiner’s rejection over Grosse-Puppendahl and
Amemiya, Appellant argues the rejected claims as a group. See Appeal Br.
6–17. We select claim 1 as representative of the group. Each of claims 3–7,
9–14, 19, 22, 23, 25, and 26 stands or falls with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).

Claim 1
With regard to claim 4 and relevant to Appellant’s arguments on
appeal, the Examiner finds that Grosse-Puppendahl discloses a fuel-resistant

2 The Examiner’s rejection of claim 16 (Final Act. 5) is moot in light of
Appellant’s cancelation of that claim.
3 US 6,162,385, issued December 19, 2000.
4 US 2006/0058450 A1, published March 16, 2006.
5 US 5,163,692, issued November 17, 1992.
6 US 2004/0054055 A1, published March 18, 2004.
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fluoroelastomer-polyamide composite that differs from the material recited
in claim 1 in that Grosse-Puppendahl does not specify the fluoroelastomer’s
temperature of retraction. Final Act. 3; Ans. 10. The Examiner finds that
Amemiya discloses fuel-resistant fluoroelastomers exhibiting a temperature
of retraction within the recited range, and that one of ordinary skill in the art
would have had a reason to use Amemiya’s fluoroelastomer in Grosse-
Puppendahl’s composite—namely, to provide freeze resistance as well as the
desired resistance to fuel. Final Act. 3; Ans. 10.
Appellant argues the Examiner fails to show how either Grosse-
Puppendahl or Amemiya teaches the relevance of a fluoropolymer’s TR-10
value to improved bonding of the fluoropolymer to polyamides. Appeal Br.
7. Appellant contends the Examiner applied impermissible hindsight by
searching the prior art for elements missing from Grosse-Puppendahl, and by
asserting that the freeze resistance attributable to Amemiya’s
fluoroelastomer would have been desired in Grosse-Puppendahl’s
composite. Id. at 8–11.
Appellant’s arguments are unpersuasive of reversible error. Grosse-
Puppendahl states that the disclosed composite articles are intended for use
as seals and, particularly, that the fluoroelastomer component should be
resistant to fuels over a wide temperature range. Grosse-Puppendahl 1:45–
46; 4:63–65. Grosse-Puppendahl further states that “[t]he selection of the
type of [fluoroelastomer] rubber depends on the desired vulcanizate
properties.” Id. at 3:37–39. Amemiya also is concerned with use of
fluoroelastomer seals in automobile fuel systems, and that in such
applications it is desirable to provide both fuel resistance and freeze
resistance. Amemiya ¶¶ 3–4. In light of the foregoing disclosures, we are
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persuaded that the Examiner’s finding of a reason to use Amemiya’s
fluoroelastomer in Grosse-Puppendahl fluoroelastomer-polyamide
composite is supported by a preponderance of the evidence of record. That
the prior art has a different reason or motivation to use the recited
fluoroelastomer is not evidence of impermissible hindsight where, as here,
there is an articulated reason supported by a rational underpinning to make
the combination. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996).
(“[T]he motivation in the prior art to combine the references does not have
to be identical to that of the applicant to establish obviousness.”).
Appellant argues the Specification provides evidence of unexpected
results. Appeal Br. 14. Particularly, Appellant contends that Table 3 in the
Specification demonstrates that a peroxide-cured fluoroelastomer yields
better polyamide bonding than a bisphenol-cured fluoroelastomer. Id. at 14–
15. Appellant also contends that Tables 4–6 in the Specification show that
heat aging performance was significantly enhanced by use of a peroxide-
cured fluoroelastomer having a TR-10 value of -19OC or lower. Id. at 15.
A party asserting unexpected results as evidence of non-obviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469–70 (Fed. Cir. 1997). Appellant’s arguments to that effect
cannot take the place of evidence. Id. at 1471; In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Moreover, the burden of proving the results are
unexpected requires Appellant to proffer factual evidence that actually
shows unexpected results relative to the closest prior art, see In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably
commensurate in scope with the protection sought by claim 1 on appeal, In
re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). “[I]t is not enough to show
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that results are obtained which differ from those obtained in the prior art:
that difference must be shown to be an unexpected difference.” In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The showing on which
Appellant relies must reasonably support the entire scope of the claims at
issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
We are not persuaded that the information contained in Tables 3–6
supports Appellant’s contention of unexpected results. Table 3, for example,
reports identical T-peel test results for composites formed with FKM-1
(identified as a peroxide-curable fluoroelastomer having a TR-10 value of
-19OC) and C-FKM-1 (identified as a peroxide-curable fluoroelastomer
having a TR-10 value of -17OC). Table 4 reports an effect of heat aging on
delamination using a single polyamide material, whereas Table 5 reports
different such effects when different polyamides within the scope of the
claimed invention are provided. See Spec. 19–20. Appellant does not
explain in the Appeal Brief why these test results demonstrate unexpected
results. Moreover, in light of our observations concerning the data in Tables
3–5, we are not persuaded that the information contained in these tables is
sufficient to show that the achieved bond strength was unexpected, or that
the showing would have been sufficiently commensurate in scope with the
claims.
For the foregoing reasons, Appellant does not persuade us of
reversible error in the Examiner’s rejection of claim 1 over Grosse-
Puppendahl and Amemiya. Accordingly, we sustain Rejection I.

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Rejection III: obviousness over Grosse-Puppendahl and Fukushi
The Examiner relies on the combined disclosures of Grosse-
Puppendahl and Fukushi in the same manner as is discussed above in
connection with Rejection I. Particularly, the Examiner finds Fukushi
discloses fuel-resistant fluoroelastomers exhibiting a temperature of
retraction within the recited range, and that one of ordinary skill in the art
would have had a reason to use Fukushi’s fluoroelastomer in Grosse-
Puppendahl’s composite to provide low temperature seal performance as
well as the desired resistance to fuel. Final Act. 7. See Fukushi ¶ 3
(“Elastomers employed in fuel seal applications generally require low
temperature properties, e.g. glass transition temperature (Tg) < -20O C. to
maintain sealing performance for cold weather.”).
With regard to the Examiner’s rejection over Grosse-Puppendahl and
Fukushi, Appellant relies on the same arguments as are presented and
discussed above in connection with the Examiner’s rejection over Grosse-
Puppendahl and Amemiya. For the reasons given above, Appellant’s
arguments are not persuasive of reversible error. Accordingly, we sustain
Rejection III for the same reasons given in connection with Rejection I.

Rejections II and IV applied to claim 8
In rejecting claim 8, the Examiner finds that Schofield teaches use of
a polyamide imide to advantageously provide a high modulus to a
fluoroelastomer-polyamide composite, thereby providing deformation
resistance at high temperature and pressure. Final Act. 4, 8; Ans. 15. See
Schofield 10:5–16 (disclosing bonding of high modulus plastic, including
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polyamide-imide, to an elastomer in a seal component “resist extrusion at
extreme high temperatures and pressures”).
Appellant does not dispute that the Examiner’s finding that the high
modulus property taught by Schofield would have been desirable in Grosse-
Puppendahl’s composite seal. Rather, Appellant solely argues that the
Examiner fails to show that Grosse-Puppendahl requires any improvement in
the modulus of the materials already disclosed in that reference. Appeal Br.
16, 20–21. The Examiner’s finding that Schofield discloses a polyamide
which would have been recognized as suitable for use as the polyamide
component in Grosse-Puppendahl is sufficient to articulate a reason for such
use. Appellant does not challenge that finding. Accordingly, Appellant’s
argument is not persuasive of reversible error.
Rejections II and IV are sustained.
CONCLUSION
The Examiner’s decision rejecting claims 1, 3–14, 19, and 22–26 is
affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–7, 9–
14, 19, 22,
23, 25, 26
103(a) Grosse-
Puppendahl,
Amemiya
1, 3–7, 9–
14, 19, 22,
23, 25, 26

8 103(a) Grosse-
Puppendahl,
Amemiya,
Schofield
8
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Application 14/119,252

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1, 3–7, 9–
14, 19, 22–
26
103(a) Grosse-
Puppendahl,
Fukushi
1, 3–7, 9–
14, 19, 22–
26

8 103(a) Grosse-
Puppendahl,
Fukushi, Schofield
8
Overall
Outcome
1, 3–14, 19,
22–26

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