Ex Parte Kondos

Board of Patent Appeals and Interferences

Aug 19, 2009

10879392 (B.P.A.I. Aug. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CONSTANTINE A. KONDOS
____________

Appeal 2009-002543
Application 10/879,392
Technology Center 1700
____________

Decided: August 19, 2009
____________

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002543
Application 10/879,392

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-35. (Appeal Brief filed April 7, 2008, hereinafter
“App. Br.,” 1-2). We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant describes moisture barrier compositions, such as coating
compositions, for controlling the transmission of water moisture to a
substrate. (Spec. [0002]). Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A moisture barrier coating composition comprising:

a binder comprising a styrenic polymer; and

microparticles dispersed in the styrenic polymer, the
microparticles comprising metal and/or non-metal particles
having an aspect ratio of greater than 2:1 up to 20:1, wherein
the coating composition has a moisture vapor transmission rate
of less than 0.95 g·mm/m2·day.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Blatz US 4,952,628 Aug. 28, 1990
Feeney US 6,232,389 B1 May 15, 2001
Hogge US 7,004,854 B2 Feb. 28, 2006

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The Examiner rejected claims 1-9, 12-19, and 23-35 under 35 U.S.C.
§ 103(a) as being unpatentable over Hogge in view of Blatz. The Examiner
rejected claims 1-3, 10-12, 19-26, 29, 31, and 35 under 35 U.S.C. § 103(a)
as being unpatentable over Feeney in view of Blatz.
The Examiner found that Hogge discloses the recited barrier
composition with the exception of the aspect ratio recited in the claims.
(Examiner’s Answer entered June 9, 2008, hereinafter “Ans.,” 3-4). The
Examiner found that Hogge discloses an aspect ratio of at least 25. (Ans. 3).
The Examiner found that Blatz discloses barrier compositions where the
addition of plate- or flake-like materials having an aspect ratio of 10-150
leads to improvement in the oxygen permeability value (OPV) by forming a
tortuous path barrier to diffusion of materials through the polymer matrix.
(Ans. 4). The Examiner determined that in light of the teachings of Blatz, it
would have been obvious to modify the aspect ratio of the particles taught by
Hogge. (Id.).
Similarly, the Examiner found that Feeney discloses the recited barrier
composition with the exception of the aspect ratio recited in the claims,
where Feeney also discloses aspect ratios of at least 25. (Ans. 5). The
Examiner again relied on the teachings of Blatz in determining that it would
have been obvious to vary the aspect ratio of Feeney for similar reasons as
detailed above.
Appellant does not dispute that Blatz discloses aspect ratios within
those recited in the claims. Rather, Appellant contends that both Hogge and
Feeney disclose aspect ratios of greater than 25, and preferably higher, such
that one of ordinary skill in the art would have no reason to look to
references in which the aspect ratio was less than 25. (App. Br. 3-5).
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Further, Appellant argues that one of ordinary skill would not have looked to
Blatz, because Blatz discloses an improvement in the oxygen permeability
rate where the present invention is concerned with achieving a particular
moisture vapor transmission rate. (App. Br. 4-5). Appellant contends that it
is well known that additives that exhibit good oxygen permeability
protection do not necessarily offer moisture vapor protection and vice versa.
(Id.)

ISSUE
Has Appellant shown that the Examiner reversibly erred in
determining that it would have been obvious to modify the aspect ratios
disclosed in Hogge or Feeney in view of the teachings of Blatz?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant’s Specification states that in one embodiment,
“microparticles create a tortuous (random and non-linear) path
across the coating composition to reduce its MVTR [moisture
vapor transmission rate].” (Spec. [0006]).
2. Hogge discloses a golf ball comprising a barrier layer, the barrier
layer comprising microparticles, where the microparticles form “a
hydrophobic tortuous path across the barrier layer.” (Col. 2, ll. 9-
32).
3. Hogge discloses that the aspect ratio of the microparticles is “at
least about 25, and up to about 30,000.” (Col. 8, ll. 28-30).
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4. Hogge is silent regarding microparticles having aspect ratios less
than 25. (See Hogge generally).
5. Feeney discloses barrier coating compositions having a filler with
“an effective aspect ratio of greater than about 25, and preferably
greater than about 100.” (Col. 3, ll. 19-24).
6. Feeney discloses that the coating provides reduction in “gas, vapor,
moisture, or chemical permeability” and can be used on “an
elastomeric substrate that requires the exclusion of air, water, or
other gas or vapors.” (Col. 3, ll. 1-11).
7. Feeney is silent regarding fillers having aspect ratios less than 25.
(See Feeney generally).
8. Blatz states:
The aspect ratio, which is the weight averaged ratio of the
equivalent disk diameter to the thickness, can be from 10 to
150, with the preferred range being 20 to 150. It is believed
that the improvement in OPV [oxygen permeability values]
is due to the plate-like structure of the mica, which permits it
to effectively form a tortuous path barrier to diffusion of
materials through the polymer matrix. For this reason[,]
other plate- or flake-like materials, such as aluminum flake,
should provide comparable improvements in OPV provided
they have similar physical dimensions.

(Col. 5, ll. 59-68).

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
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or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
The Federal Circuit has held that when the difference between a
claimed invention and the prior art is a claimed range; the applicant must
show that the range is critical through unexpected results. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990).
The law is replete with cases in which the difference
between the claimed invention and the prior art is some range
or other variable within the claims . . . . These cases have
consistently held that in such a situation, 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.

Id. at 1578.

ANALYSIS
Appellant does not separately argue the claims subject to each of the
two grounds of rejection. Accordingly, we confine our discussion to
appealed claim 1, which contains claim limitations representative of the
arguments made by Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(vii).1
We are not persuaded by Appellant’s argument that because Hogge
and Feeney disclose aspect ratios greater than 25, one of ordinary skill in the
art would not have been motivated to include microparticles having aspect

1 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
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ratios less than 25. Blatz discloses that microparticles having aspect ratios
from 10 to 150 provide a tortuous path barrier to the diffusion of materials
through a polymer matrix. (FF 8). Therefore, one of ordinary skill in the art
would have reasonably expected that the desired barrier properties would
also have been present in applying microparticles having aspect ratios falling
within the range disclosed in Blatz to the barrier compositions in Hogge or
Feeney.
In addition, we do not agree with Appellant that because Blatz is
directed to oxygen permeability rather than moisture vapor protection, one
of ordinary skill in the art would not have looked to Blatz in modifying the
compositions of Hogge or Feeney. Appellant has failed to provide any
persuasive evidence that microparticles having the aspect ratios disclosed in
Blatz would not have also provided moisture vapor protection. Indeed, we
agree with the Examiner that because both Hogge and Blatz disclose the
presence of a tortuous path in the barrier layer, one of ordinary skill in the
art would have had a reasonable expectation that microparticles having the
aspect ratios disclosed in Blatz would have provided moisture vapor
protection. (Ans. 4 and 7). Further, Appellant has failed to show error in the
Examiner’s reasonable position that because Feeney discloses reduction in
gas, vapor, and moisture permeability, one of ordinary skill in the art would
have looked to Blatz, which is directed to gas permeability, and would have
reasonably expected similar results in moisture permeability. (See Ans. 8-9).
We also note that Appellant has presented no evidence showing that
the aspect ratios recited in the claims are critical. Therefore, Appellant’s
arguments are not persuasive of reversible error.
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CONCLUSION
Appellant has failed to demonstrate that the Examiner reversibly erred
in determining that it would have been obvious to modify the aspect ratios
disclosed in Hogge in view of the teachings of Blatz.
Appellant has failed to demonstrate that the Examiner reversibly erred
in determining that it would have been obvious to modify the aspect ratios
disclosed in Feeney in view of the teachings of Blatz.

ORDER
We affirm the Examiner’s decision rejecting claims 1-9, 12-19, and
23-35 under 35 U.S.C. § 103(a) as being unpatentable over Hogge in view of
Blatz.
We affirm the Examiner’s decision rejecting claims 1-3, 10-12, 19-26,
29, 31, and 35 under 35 U.S.C. § 103(a) as being unpatentable over Feeney
in view of Blatz.

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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)(v).

AFFIRMED

psb

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