Ex Parte Kunze et al

Patent Trial and Appeal Board

Nov 13, 2017

13212312 (P.T.A.B. Nov. 13, 2017)

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”).
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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.
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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.
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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).
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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
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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.
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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.
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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.
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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
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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.
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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).
AFFIRMED
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