Ex Parte Kunze et alDownload PDFPatent Trial and Appeal BoardNov 13, 201713212312 (P.T.A.B. Nov. 13, 2017) Copy Citation 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. 13/212,312 08/18/2011 Steffen Kunze EUR0336PUSA 6007 22045 7590 11/15/2017 RROOKS KTTSHMAN P C EXAMINER 1000 TOWN CENTER VINEIS, FRANK J TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 11/15/2017 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): docketing @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEFFEN KUNZE, HERMANN SPANNER, THOMAS UNTERHAUSER, and CHRISTIAN WEIMER Appeal 2015-008105 Application 13/212,312 Technology Center 1700 Before ADRIENE LEPIANE HANLON, MICHELLE N. ANKENBRAND, and JANE E. INGLESE, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 1, 13, 18—20, 30, and 31. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated March 23, 2015 (“App. Br.”). 1. A composite element made from a preform of fiber-reinforced plastic material arranged around a core with a foil between the Appeal 2015-008105 Application 13/212,312 preform and the core, wherein the foil is a coextruded multi-layer thermoplastic foil with an outer adhesive layer and an inner barrier layer, and with the outer adhesive layer of the coextruded multi-layer thermoplastic foil having a lower melting temperature than the inner barrier layer, wherein the core is dissoluble in a medium that does not destroy the inner barrier layer. App. Br. 13. The claims on appeal stand rejected as follows:1 (1) claims 1, 13, 18—20, 30, and 31 under 35 U.S.C. § 112, first paragraph, based on the written description requirement; (2) claims 1, 13, 18—20, 30, and 31 under 35 U.S.C. § 103(a) as unpatentable over Smith et al.2 in view of Spengler,3 as evidenced by CAPRAN 980 Data Sheet,4 CAPRAN 526 Data Sheet,5 and Plastics International (Chemical Resistance Chart);6 and (3) claims 1, 13, 18—20, 30, and 31 under 35 U.S.C. § 103(a) as unpatentable over Smith in view of Schrenck7 and Spengler, as evidenced by CAPRAN 980 Data Sheet, CAPRAN 526 Data Sheet, and Plastics International (Chemical Resistance Chart). 1 The Examiner withdrew the rejection of claim 19 under 35 U.S.C. § 112, second paragraph, as being indefinite. Examiner’s Answer dated July 6, 2015 (“Ans.”), at 15. 2 US 2007/0095459 Al, published May 3, 2007 (“Smith”). 3 US 6,287,678 Bl, issued September 11, 2001 (“Spengler”). 4 CAPRAN® 980 Data Sheet, effective date: October 1, 2007. 5 CAPRAN® 526 Data Sheet, effective date: October 1, 2007. 6 Plastics International, Chemical Resistance Chart, http://plasticsintl.com/plastics_chemical_resistence_chart.html (last visited June 4, 2014) (“Plastics International”). 7 US 3,773,882, issued November 20, 1973 (“Schrenck”). 2 Appeal 2015-008105 Application 13/212,312 The rejections on appeal are sustained for the reasons provided in the Examiner’s Answer. We add the following for emphasis. B. DISCUSSION 1. Rejection (1) Claims 1 and 18 recite “wherein the core is dissoluble in a medium that does not destroy the inner barrier layer” and “the dissoluble core being dissoluble in a medium that does not dissolve the innermost barrier layer,” respectively. App. Br. 13. The Examiner finds those limitations are not supported by the original disclosure because “[t]he specification is silent as to what if anything happens to innermost barrier layer in embodiments where the core is dissolved.” Final 3.8 Claim 30 depends from claim 1 and recites that “the inner barrier layer and the core are formed of different materials.” App. Br. 14. Similarly, claim 31, which depends from claim 18, recites that “the innermost barrier layer and the dissoluble core have differing material compositions.” App. Br. 14. The Examiner also finds those limitations are not supported by the original disclosure because “[tjhere are no materials mentioned for the inner [or innermost] barrier layer other than a thermoplastic and no materials mentioned for the core other than an open cell. There is no recitation that the open cell core is different than the thermoplastic . . . .” Final 3. The Appellants argue: While Applicant’s specification teaches scavenging the core, no mention is made of any impact to the barrier layer. “[A] preform 1 of fiber-reinforced material is attached to the outer layer 4 of [a] multi layer thermoplastic foil 3. Resin is applied to the preform 1 and cured to the composite element 6 in a mould. Subsequently the dissoluble core 2 is removed by scavenging inside the composite element 6.” 8 Final Office Action dated November 4, 2014. 3 Appeal 2015-008105 Application 13/212,312 P. 8,11. 13-18 (emphasis added). As maybe seen, the specification teaches only that the core is removed by scavenging. App. Br. 4. Therefore, the Appellants argue that “one of ordinary skill in the art would reasonably conclude that the inventor had possession of a configuration wherein only the core is scavenged, while the barrier layer remains intact.” App. Br. 4. The Appellants also argue that “because the core is taught as being removed by scavenging while the innermost barrier layer of the multi-layer foil is not, one of ordinary skill in the art can reasonably conclude that Applicant had possession of the invention with the barrier layer and core having differing material compositions.” App. Br. 5. In response, the Examiner finds the negative limitations recited in claims 1 and 18, which do not appear in the originally-filed disclosure, introduce new concepts and violate the written description requirement of § 112, first paragraph. Ans. 16 (citing Ex parte Grasselli, 231 USPQ 393 (Bd. Pat. App. 1983). Moreover, the Examiner explains: While the present specification is silent with respect to any impact of the scavenger on the barrier layer, [it] is noted that as stated in MPEP 2173.05(i), the “mere absence of a positive recitation is not the basis for an exclusion.” Further Appellant teaches the inner barrier layer functions to prevent resin from penetrating the core (Specification, page 4, [11.] 24- 25) and that the core is dissoluble after curing of the material {id., 4:26-28). Thus the core is not removed until after the resin is applied, after the inner layer has served its function, i.e. prevention of resin from penetrating the core. Therefore it is just as reasonable to conclude that the core is affected by the medium as the inner barrier layer is no longer needed. Ans. 16—17. 4 Appeal 2015-008105 Application 13/212,312 We recognize that “the invention claimed does not have to be described in ipsis verbis in order to satisfy the description requirement of § 112.” In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Nonetheless, the disclosure of the application as originally filed must reasonably convey to one of ordinary skill in the art that the inventor had possession at that time of the later claimed subject matter. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). “[Wjhether a patent specification adequately describes the subject matter claimed is a question of fact.” In re Alton, 76 F.3d 1168, 1171—72 (Fed. Cir. 1996). Factual determinations by the United States Patent and Trademark Office “must be based on a preponderance of the evidence,”9 which is defined as “[ejvidence which as a whole shows that the fact sought to be proved is more probable than not.”10 In this case, the Appellants’ original disclosure is silent as to the solubility of the inner barrier layer, does not describe any core materials or any specific thermoplastic barrier materials, and does not identify the medium used to dissolve the core. Thus, on this record, it is not more probable than not that the core is dissoluble in a medium that does not destroy the inner barrier layer, as recited in claims 1 and 18. Likewise, it is not more probable than not that the inner barrier layer and the core are formed of different material compositions as recited in claims 30 and 31. Based on the foregoing, the § 112, first paragraph, rejection of claims 1, 13, 18—20, 30, and 31 is sustained. 9 In re Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992). 10 Black’s Law Dictionary 1064 (5th ed. 1979). 5 Appeal 2015-008105 Application 13/212,312 2. Rejection (2) The Examiner finds Smith discloses a composite sandwich panel comprising a permeable core (42) surrounded by a barrier layer (44) and skins (50, 52) which surround the barrier layer (44). Ans. 3-4. Smith Figure 2, reproduced below, illustrates one embodiment of the sandwich panel. Smith Fig. 2 is a partial schematic side view of a sandwich panel according to one embodiment of the invention. Smith discloses that foam core 42 is bonded to internal barrier 44 with adhesive layers 46, 48 and skins 50, 52 are bonded to internal barrier 44 with adhesive layers 54, 56, respectively. Smith 117. The Examiner appears to find that adhesive layer 46/barrier 44/adhesive layer 54 and adhesive layer 48/barrier 44/adhesive layer 56 correspond to the claimed multi-layer thermoplastic foil. Ans. 5. The Examiner finds “Smith does not teach the core is dissoluble in a medium that does not destroy the inner barrier layer [44].” Ans. 6. Nonetheless, the Examiner finds Spengler discloses a composite sandwich panel comprising an air permeable, expanded polypropylene core. Ans. 6. The Examiner concludes that “[o]ne of ordinary skill in the art would be motivate[d] to use expanded 6 Appeal 2015-008105 Application 13/212,312 polypropylene, as taught in Spengler, as the foam core of Smith because Smith teaches the foam can be any of the known foams.” Ans. 6; see also Ans. 19. Indeed, Smith discloses that “foam core 42 can be made from any of the foams used in sandwich panel construction provided that the foam is sufficiently porous to allow transport of pressurizing gases and/or liquid uniformly against the barrier 44.” Smith 128 (emphasis omitted). Exemplary pressurizing gases include air. Smith 131. The Examiner relies on Plastics International to show that polypropylene is dissolvable in mediums (e.g., toluene) that do not attack Smith’s barrier material (i.e., nylon 66). Ans. 6. The Appellants argue that ‘“[the] foam core 42 [of Smith] ... is adhesively bonded to the interior surface of barrier 44 by adhesive layers 54 and 56 [sic, 46 and 48], respectively.’” App. Br. 7 (citing Smith 128). The Appellants argue that “because there is an additional adhesive layer 54/56 [sic, 46/48] interposed between the barrier layer 44 and the core 42, the barrier 44 is not an ‘inner barrier layer’ as recited in claim 1.” App. Br. 7 (emphasis added). Claim 1 recites that “the foil is a coextruded multi-layer thermoplastic foil with an outer adhesive layer and an inner barrier layer.”11 App. Br. 13 (emphasis added). The Appellants do not direct us to any language in claim 1 that excludes a multi-layer foil comprising additional, unrecited layers, such as adhesive layers 46 and 48 disclosed in Smith. Thus, we conclude that Smith’s multi-layer foil comprising, inter alia, outer adhesive layers 54, 56 and inner barrier 44 (which correspond to the outer adhesive layer and inner barrier layer, respectively, recited 11 The Examiner concludes that “coextruded” is a process limitation. Ans. 6. 7 Appeal 2015-008105 Application 13/212,312 in claim 1) is within the scope of the claimed multi-layer foil. See Ans. 18 (finding that barrier 44 is an inner layer). Similarly, claim 18 recites “a coextruded multi-layer thermoplastic foil having an outer adhesive layer adhered to and facing the preform and an innermost barrier layer adjacent to the outer layer and facing away from the preform.” App. Br. 13 (emphasis added). The Appellants argue that Smith does not disclose or suggest an innermost barrier layer as recited in claim 18 because “Smith teaches an additional adhesive layer 46 between the barrier layer 44 and the core 40.” App. Br. 7 (emphasis omitted). Again, the Appellants do not direct us to any language in claim 18 that excludes Smith’s adhesive layers 46 and 48.12 In that regard, the Examiner finds layer 46 is an adhesive layer, not a barrier layer. Thus, barrier layer 44 is the “innermost barrier layer” in Smith’s multi-layer foil. Ans. 18. The Appellants also argue there is no suggestion in Smith to use a polypropylene core in the disclosed sandwich panel. App. Br. 8. The Appellants’ argument fails to consider the prior art as a whole. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for obviousness is not that the claimed invention must be expressly suggested in any one of the references). As explained by the Examiner: Absent a teaching of a specific material by Smith for the foam core, a skilled artisan would look to the prior art for examples of suitable foams which meet the criteria set forth by Smith, i.e. a foam which is sufficiently porous to allow transport of gas/liquid. Thus the use of the foam of Spengler would have been obvious [because] the 12 In one embodiment of the Appellants’ invention, the multi-layer thermoplastic foil is provided with three layers, a first outer layer having an adhesive contact surface towards the preform, an intermediate barrier layer, and a second outer layer having an adhesive contact surface towards the core. Spec. 7,1. 18—8,1. 2. 8 Appeal 2015-008105 Application 13/212,312 foam of Spengler satisfies this criteria (a thermoplastic permeable to air) and is in the same field of endeavor (sandwich panels). Ans. 19 (emphasis omitted). Next, the Appellants argue there is no motivation to modify Smith as proposed by the Examiner because “[n]one of the references, explicitly or implicitly, suggests] dissolving a core by scavenging.” App. Br. 8 (emphasis omitted). Initially, we note that “the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.”). Moreover, claims 1 and 18 do not recite that the core is dissolved by scavenging, or any other method for that matter. Rather, claim 1 recites that “the core is dissoluble in a medium that does not destroy the inner barrier layer” and claim 18 recites “the dissoluble core being dissoluble in a medium that does not dissolve the innermost barrier layer.” App. Br. 13 (emphasis added). We interpret claims 1 and 18 as reciting a property of the core material, i.e., capable of being dissolved in a medium that does not dissolve the inner barrier layer. There is no dispute on this record that the polypropylene foam disclosed in Spengler is capable of being dissolved in a medium (e.g., toluene) that does not destroy the material of Smith’s barrier 44 (i.e., nylon 66). See Ans. 6. Thus, the Appellants’ argument is not persuasive of reversible error. 9 Appeal 2015-008105 Application 13/212,312 Finally, the Appellants argue that Spengler teaches away from the modification proposed by the Examiner (i.e., modifying the core material of Smith’s composite panel with polypropylene as disclosed in Spengler) because Spengler teaches a composite panel wherein both the core and the adjacent layers are the same material (i.e., polypropylene) rather than different materials as claimed. App. Br. 8—9 (citing Spengler, col. 2,11. 54—56) (emphasis omitted). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In a preferred embodiment, Spengler discloses that the outer layers comprise polypropylene fibers and as much as 70% natural fibers, which is a different material from the polypropylene core. Spengler, col. 6,1. 53—col. 7,1. 13; see also Ans. 19. Moreover, Spengler’s broad disclosure suggests that the core and the adjacent layers may be different materials. See Ans. 19 (finding that preferred embodiments “do not constitute a teaching away from a broader disclosure” (citing MPEP § 2123(11))). Thus, contrary to the Appellants’ arguments, Spengler does not teach away from the combination proposed by the Examiner. In sum, the Appellants have not identified a reversible error in the § 103(a) rejection based on Smith in view of Spengler, as evidenced by CAPRAN 980 Data Sheet, CAPRAN 526 Data Sheet, and Plastics International. Therefore, the rejection is sustained. 3. Rejection (3) In rejection (3), the Examiner adds Schrenck to the prior art applied in rejection (2). The Examiner finds “Schrenck teaches [that] co-extrusion of two or more synthetic resinous materials] is well known in the art.” Ans. 12 (citing 10 Appeal 2015-008105 Application 13/212,312 Schrenck 1,11. 23—25). The Examiner also finds that Schrenck’s method produces “a substantially greater uniformity of layer thickness in the final product.” Ans. 12 (citing Schrenck 2,11. 24—29). Based on those findings, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to form the modified composite of Smith “using coextruded films as taught by Schrenck for the benefit of uniformity of layer thickness.” Ans. 12. The Appellants argue “there is no proper motivation to combine Smith with Schrenck as asserted” for several reasons including the argument that “Schrenck does not disclose coextrusion of materials having differing melting temperatures.” App. Br. 10 (emphasis omitted). Suffice it to say that claims 1 and 18 recite “a coextruded multi-layer thermoplastic foil.” App. Br. 13 (emphasis added). We conclude that “coextruded” is a process limitation in a product claim. See Ans. 6, 8 (concluding that “coextrusion of the foil is a process step”). Thus, “determination of patentability is based on the product.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). The Appellants do not direct us to any evidence showing that the claimed composite element comprising a coextruded multi-layer thermoplastic foil is structurally distinct from Smith’s modified composite panel. See id. (“If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”). Therefore, the § 103(a) rejection based on Smith in view of Schrenck and Spengler, as evidenced by CAPRAN 980 Data Sheet, CAPRAN 526 Data Sheet, and Plastics International is sustained. C. DECISION The Examiner’s decision is affirmed. 11 Appeal 2015-008105 Application 13/212,312 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). AFFIRMED 12 Copy with citationCopy as parenthetical citation