Ex Parte MacAdams et al

Patent Trials and Appeals Board

Mar 6, 2019

14083928 - (D) (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/083,928 11/19/2013
8015 7590 03/08/2019
CYTEC INDUSTRIES INC.
1937 WEST MAIN STREET
STAMFORD, CT 06902
FIRST NAMED INVENTOR
Leonard A. MacAdams
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12024S-US-NP 1035
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
03/08/2019 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):
StamfordPatent@solvay.com
Cheryle.Telesco@solvay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARD A. MACADAMS and DALIP K. KOHLI 1
Appeal 2018-003 7 64
Application 14/083,928
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3, 4, 6-8, 11, and 13. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a bonding process for
producing fiber-reinforced polymeric composites. E.g., Spec. 2; Claim 1.
Claim 1 is reproduced below from page 11 (Claims Appendix) of the Appeal
Brief:
1 The Appellant is the Applicant, Cytec Industries Inc., which is also
identified as the real party in interest. See App. Br. 2.
Appeal2018-003764
Application 14/083,928
1. A composite bonding process comprising:
a) laying up a plurality of curable prepreg plies on a non-
planar, three-dimensional molding surface to form a first
prepreg layup, wherein at least a portion of the first prepreg
layup conforms to the molding surface and each prepreg ply
comprises a layer of reinforcing fibers impregnated with a
curable, thermoset matrix resin comprising one or more
epoxy resins and a curing agent;
b) partially curing the first prepreg layup to a degree of cure
within the range of 25% to 70% while the first prepreg layup
is on the molding surface;
c) joining the partially cured first prepreg layup to a second
prepreg layup such that a curable adhesive is applied
between the prepreg layups and the side of the first prepreg
layup that was in contact with the molding surface facing the
second prepreg layup, wherein the second prepreg layup is
uncured or partially cured to a degree of cure within the
range of 25% to 70%; and
d) fully co-curing the joined prepreg layups to form a bonded
composite structure,
whereby, following co-curing, the adhesive is chemically
bonded to and mechanically diffused with the matrix resin of
the prepreg layups resulting in a chemically bonded interface
between the adhesive and each prepreg layup, and
wherein steps (b )-( d) are carried out without any intervening
surface treatment to physically modify the surfaces of the
partially cured first prepreg layup.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 1, 3, 4, 6-8, and 11 over Lefebure (US 2010/0147460 Al,
published June 17, 2010), Kondo (US 2001/0035249 Al, published
Nov. 1, 2001), McKague (US 5,954,898, issued Sept. 21, 1999), Kohli
2
Appeal2018-003764
Application 14/083,928
(US 2011/0048637 Al, published Mar. 3, 2011), and Kalnin (US 3,691,000,
issued Sept. 12, 1972);
2. Claims 1, 3, 4, 6-8, 11, and 13 over Lefebure, Kondo, McKague,
Kohli, Kalnin, and Lu (US 7,705,086 B2, issued Apr. 27, 2010).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action, and in the Examiner's Answer. See generally Final Act. 2-1 7;
Ans. 3-18.
Rejection 1
The Examiner's rejection of claim 1 is set forth at pages 3-9 of the
Answer. Of particular relevance to the issues raised by the Appellant in this
appeal, the Examiner acknowledges that Lefebure "does not recite a specific
degree of cure of 25% to 70% in teaching partial cure of the first prepreg
layup." Ans. 4. However, the Examiner finds that Lefebure teaches that "a
suitable degree of cure should be determined experimentally." Id. at 3.
Relatedly, the Examiner finds that degree of cure "is a result effective
variable for achieving the desired properties with respect to handling and
storage of the partially cured layup, and thus would be selected as a matter
of routine experimentation." Id. at 6. According to the Examiner, "[s]ince
[ the prior art] references and the Applicant seek to control the level of partial
curing to achieve some of the same objectives ... it is reasonable to expect
that similar values of cure degree would be found suitable." Id.
3
Appeal2018-003764
Application 14/083,928
The Examiner also finds that Kondo teaches ( 1) fiber reinforced
composites, (2) a "hardening degree" of 1-80% for purposes of handling and
storage, and (3) that partially hardened parts "may be integrated with another
layup which is not fully hardened during a step of completely hardening to
produce a final product." Ans. 5. The Examiner acknowledges that Kondo
describes a degree of "hardening" rather than a degree of "curing," but the
Examiner finds that Kondo teaches the use of thermosetting resins such as
epoxy as recited by the Appellant's claim 1, and that "it is well known in the
art to use both 'curing' and 'hardening' to refer to the reactions of
thermosetting resins which produces a hardened or cured product." Id. As
evidence of that, the Examiner cites Kalnin, id. at 5---6, which includes the
following disclosure: "A variety of epoxy resin curing agents may be
employed in conjunction with the epoxy resin. The curing or hardening of
the epoxy resin typically involves further reaction of the epoxy or hydroxyl
groups to cause molecular chain growth and cross-linking." Kalnin at 4: 18-
22 ( emphasis added). Thus, independent from the result-effective variable
rationale described above, the Examiner finds that Kondo teaches a range of
hardening degrees (1-80) that overlaps with the claimed range of curing
degrees (25-70), creating a prima facie case of obviousness. Ans. 5---6.
As to the claimed curable adhesive that is applied between the prepreg
layups, the Examiner acknowledges that Lefebure "does not teach joining
the layups such that a curable adhesive is applied between the prepreg
layups." Id. at 4. The Examiner finds that McKague teaches "that
composite preforms which are not fully cured can be joined with or without
an adhesive and preforms may be co-cured, i.e. cured together, to form a
fully cured part." Id. at 6-7. The Examiner acknowledges that McKague
4
Appeal2018-003764
Application 14/083,928
"does not recite a particular adhesive composition," but finds that "such
adhesives are known in the art" as evidenced by Kohli' s disclosure of "a
curable epoxy adhesive for bonding composites." Id. The Examiner
determines that it would have been obvious to apply "a curable adhesive on
at least one of the prepreg layups of Lefebure" because "one of ordinary skill
in the art would have been motivated to suitably join the layups." Id.
In view of those and other findings less material to the issues on
appeal, the Examiner concludes that the subject matter of claim 1 would
have been obvious to a person of ordinary skill in the art.
The Appellant first argues that the prior art does not teach or suggest a
degree of curing of25-70%, as required by claim 1. App. Br. 4--8. More
specifically, the Appellant argues (1) that degree of "hardening," as
disclosed by Kondo, and degree of "curing," as claimed, are not "direct[ly]
correlat[ed]," id. at 5---6, (2) that the Examiner does not adequately establish
that degree of curing is a result-effective variable, id. at 6, and (3) that the
claimed range of25-70% produces results, e.g., "immun[ity] to
contamination" and a "bonding process that does not require the
conventional surface preparation," that "are not recognized by the cited prior
art," id. at 6-7.
Those arguments are not persuasive of reversible error in the
rejection. As to the result-effective variable argument, Lefebure explicitly
discloses (1) "partial thermal curing" for "setting the thermosetting
material," (2) that "[t ]he moment at which it is desirable to interrupt the
thermal curing," i.e., the degree of curing, "depends on the type of resin
used," and (3) that the degree of curing "is determined, for example,
experimentally." Lefebure ,r 37. Lefebure also explains that "partial thermal
5
Appeal2018-003764
Application 14/083,928
curing" has "the effect of partially polymerizing the resin ... up to a stage in
which the first element has acquired both a sufficient chemical stability to
guarantee its storage at ambient temperature and a sufficient dimensional
stability to ensure its handling and to guarantee its integrity during later
manufacturing operations of the piece." Id. at Abstract. Those disclosures
support the Examiner's finding that degree of curing is a result-effective
variable, and that a person of ordinary skill in the art would have been
motivated to optimize degree of curing to achieve desired chemical and
dimensional stability for, e.g., storing and handling. See In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective."). The Appellant's Specification likewise describes
concerns with both storing and handling. See Spec. 3 ("Uncured prepregs
are difficult to handle and lack the rigidity necessary to be self-supporting."),
5 ("Staging aids in elevating the glass transition temperature (T g) of the
material sufficiently high to allow prolonged room temperature storage of
the staged composite substrates.").
We are not persuaded of reversible error in the Examiner's
determination that degree of curing is a result-effective variable, and that a
person of ordinary skill in the art would have been motivated to optimize
degree of curing, including to values that fall within the scope of claim 1, to
achieve desired goals.
As to Kondo' s disclosure of degree of "hardening" as opposed to
degree of "curing," Kondo discloses that the purpose of partial "hardening"
is to facilitate "handl[ing]" and "stor[age]." Kondo ,r 26. As noted above,
both Lefebure and the Appellant's Specification disclose that a purpose of
6
Appeal2018-003764
Application 14/083,928
partial curing is to facilitate handling and storage. Additionally, Kondo
specifically discloses the use of epoxy resins as its thermosetting resin.
Kondo ,r 27. Kalnin expressly equates "curing" and "hardening" of epoxy
resins and appears to treat the two terms as synonyms. See Kalnin at 4: 18-
22. Kondo teaches a broad partial hardening range of 1-80%. Kondo ,r 26.
Claim 1 recites a broad partial curing range of 25-70%.
Even assuming that the Appellant is correct that Kondo' s hardening
ratio of 1-80% does not "direct[ly] correlate[e]" to a curing ratio of 1-80%,
see App. Br. 5---6, the evidence of record shows that "hardening" and
"curing" have similar purposes, and that both hardening and curing involve
polymerization ("molecular chain growth" as described by Kalnin) and
cross-linking. Compare Kalnin at 4:18-22, with Spec. 6 ("The terms 'cure'
and 'curing' ... encompass polymerizing and/or cross-linking of a
polymeric material."). Particularly in view of both the breadth of the range
recited by Kondo and the breadth of the range recited by claim 1, we are not
persuaded of reversible error in the Examiner's determination that the
"curing" range that corresponds to Kondo' s "hardening" range at least
partially overlaps the curing range of claim 1.
Although both a result-effective-variable rationale and an
overlapping-ranges rationale may be rebutted by evidence showing that the
claimed range is critical and produces unexpected results, see Applied
Materials, 692 F.3d at 1297, the Appellant's assertion that the claimed range
of 25-70% produces results that "are not recognized by the cited prior art,"
App. Br. 6-7, is not sufficient to overcome the Examiner's rejection.
Namely, the Appellant does not establish or even meaningfully assert that
any results would have been unexpected to a person of ordinary skill. See
7
Appeal2018-003764
Application 14/083,928
Applied Materials, 692 F.3d at 1297 ("The outcome of optimizing a result-
effective variable may still be patentable if the claimed ranges are critical
and produce a new and unexpected result which is different in kind and not
merely in degree from the results of the prior art." ( emphasis added; internal
quotation marks omitted)). Even assuming that the claimed range is
"critical" to achieving the desired results, the Appellant provides no
evidence ( or persuasive argument) that optimizing curing degree, including
to values within the recited range, would have been anything more than
routine optimization, or otherwise beyond the ordinary level of skill in the
art.
On this record, the Appellant's arguments concerning the claimed
"degree of curing" do not persuade us of reversible error in the Examiner's
rejection.
As to inclusion of a "curable adhesive" in the process of Lefebure, see
Ans. 6-7, the Appellant argues that "[i]t is apparent from the disclosure of
McKague and Lefebure that a curable adhesive is not necessary for the
purposes disclosed therein." App. Br. 8. That argument is not persuasive.
Even if a person of ordinary skill in the art would not have viewed an
adhesive as strictly "necessary" in the process of Lefebure because Lefebure
itself does not disclose the use of an adhesive, the Appellant's argument fails
to identify reversible error in the rejection because it does not address the
Examiner's finding that a person of ordinary skill in the art would have been
motivated to include an adhesive in Lefebure to improve "toughness, high
temperature shear properties and suitability in demanding applications."
Ans. 6-7; Final Act. 6-7. On this record, we discern no basis to reject that
finding.
8
Appeal2018-003764
Application 14/083,928
We have carefully considered the Appellant's arguments, but we are
not persuaded of reversible error in the Examiner's rejection of claim 1. We
affirm the rejection.
Claims 3 and 4 narrow the degree of curing from 25-70% to 25-50%
( claim 3) and 40-60% ( claim 4). The Examiner determines that those
narrower ranges would have been obvious for the reasons provided with
respect to claim 1. See Ans. 9.
The Appellant asserts, with no additional arguments beyond those
discussed above, that "[n]one of the prior art references ... discloses or
suggests partially curing a prepreg layup" to the degree recited by claims 3
or 4. App. Br. 9. That argument is not persuasive for reasons set forth
above. Although the ranges of claims 3 and 4 are narrower than the range of
claim 1, the Appellant does not persuasively assert that the narrower ranges
yield unexpected results or otherwise would not have been achieved by a
person of ordinary skill in the art performing routine optimization. We
affirm the Examiner's rejection of claims 3 and 4.
The Appellant presents no separate arguments for claims 6-8 or 11,
which depend from claim 1. Accordingly, those claims fall with claim 1.
Rejection 2
Rejection 2 is similar to Rejection 1 and involves each of the
references involved in Rejection 1 plus additional reference Lu. See
Ans. 10-11. The Examiner cites Lu for the disclosure of a mold release
agent that "allows adhesive joining of molded parts without additional steps
of removing residual mold release coating and without additional surface
treatment steps as recited in claims 1 and 6," and for the disclosure that
small amounts of contamination on the molded surfaces do not affect
9
Appeal2018-003764
Application 14/083,928
"subsequent adhesive bonding," which is relevant to claim 13. See Ans. 10-
11. The Examiner determines that it would have been obvious "to provide
these limitations in the modified method of Lefebure because one of
ordinary skill in the art would have been motivated to facilitate mold release
and allow adhesive bonding of the molded surfaces without surface
treatment to remove contamination from the mold release coating in
accordance with the above noted teachings of Lu." Id.
The Appellant argues that "Lu does not cure the deficiencies of
Lefebure, Kondo, Kalnin, McKague, and Kohli with regard to" the
arguments discussed and found unpersuasive above with respect to
Rejection 1. See App. Br. 9. The Appellant also argues that "Lu is not
relevant to bonding composite parts" because "Lu fails to teach that the de-
molded composite part is a partially cured composite part that can be bonded
to another composite part via the surface that was in contact with the mold."
App. Br. 10.
That argument is unpersuasive. Contrary to the Appellant's assertion
that "Lu is not relevant to bonding composite parts," App. Br. 10, Lu
expressly contemplates bonded composite parts. E.g., Lu at 1: 14--17 ("For
example, many airplane hulls (i.e. fuselage and wings) are constructed from
a multitude of molded composite parts that are subsequently bonded together
using an adhesive."), 2:6-8 ("Also, molded composite parts are usually post
bonded (adhered to other composite parts using an adhesive)."). As the
Examiner explains in the Answer, "Lu was applied to show it is known in
the art that bonding between shaped composite parts may be achieved even
with some contamination from a mold release agent and without a surface
10
Appeal2018-003764
Application 14/083,928
treatment. Thus, Lu is clearly relevant to bonding composite parts."
Ans. 18 (citing Lu at 3:29-33, 10:28-35, 11:15-25, 11:52-55).
Other references were used for the disclosure of partially cured
composite parts that can be bonded to other composite parts. The
Appellant's assertion that Lu does not concern partially cured composite
parts focuses narrowly on Lu and does not address or show error in the
Examiner's combination rationale. See In re Keller, 642 F.2d 413, 426
(CCP A 1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.").
In the Reply Brief, the Appellant does not address the Examiner's
additional citations to Lu or otherwise dispute the Examiner's assertion that
Lu is relevant to bonding composite parts. See generally Reply Br. On this
record, the Appellant's arguments concerning Lu do not persuade us of
reversible error in the Examiner's rejection. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections .... ").
The Appellant also maintains the arguments discussed above with
respect to Rejection 1 concerning the recited degree of curing. App. Br. 10.
Those arguments are unpersuasive for reasons set forth above.
We are not persuaded of reversible error in Rejection 2. We affirm
the rejection.
11
Appeal2018-003764
Application 14/083,928
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1, 3, 4, 6-8, 11, and
13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
12