Ex Parte Quantrille et al

Patent Trial and Appeal Board

Mar 15, 2016

13225661 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/225,661 09/06/2011 Thomas E. Quantrille
22907 7590 03/17/2016
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
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.
002018.00035 2035
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
eofficeaction@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS E. QUANTRILLE and LEWIS A. SHORT
Appeal2014-005423
Application 13/225,661
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
AVEL YN M. ROSS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3, 5, 8-11, and 14. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a polymeric composite material. Claims 1 and 9
are illustrative:
1. A polymeric composite material formed by copolymerizing
polymer precursors, oligomers, or crosslinking agents with
functionalized silicon carbide comprising silicon carbide
whiskers covalently bonded to a coupling agent having at least
one organofunctional moiety.
Appeal2014-005423
Application 13/225,661
9. A polymeric composite material formed by
copolymerizing polymer precursors, oligomers, or crosslinking
agents with functionalized inorganic whiskers comprising
inorganic whiskers covalently bonded to a coupling agent
having at least one organofunctional moiety.
Kim
Murata
Kambe
Mori (as translated)
The References
us 4,992,325
us 5,942,205
US 6,881,490 B2
JP 62-113800 A
Feb. 12, 1991
Aug. 24, 1999
Apr. 19, 2005
May 25, 1987
Silquestâ„¢ A-1100, MOMENTIVE PERFORMANCE MATERIALS INC. TECHNICAL
DATA SHEET (undated) (hereinafter Silquest).
The Rejections
The claims stand rejected as follows: claims 1, 3, 5, 8-11, and 14
under 35 U.S.C. § 102(b) over Mori as evidenced by Silquest, claims 1, 3, 5,
and 8 under 35 U.S.C. § 103 over Kim in viev,r ofKambe and claims 9-11
and 14 under 35 U.S.C. § 103 over Murata in view ofKambe as evidenced
by Silquest.
OPINION
We reverse the rejection under 35 U.S.C. § 102(b) and affirm the
rejections under 35 U.S.C. § 103.
Rejection under 35 U.S. C. § 102(b)
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
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Appeal2014-005423
Application 13/225,661
We need address only the independent claims (1 and 9). Those claims
are in product-by-process form. The patentability of a claim in product-by-
process form is determined based on the product itself, not on the method of
making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("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."). Whether a rejection is under
35 U.S.C. § 102 or§ 103, when the Appellants' product and that of the prior
art appear to be identical or substantially identical, the burden shifts to the
Appellants to provide evidence that the prior art product does not necessarily
or inherently possess the relied-upon characteristics of the Appellants'
claimed product. See In re Fitzgerald, 619 F .2d 67, 70 (CCP A 1980); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742,
745 (CCPA 1974). The reason is that the Patent and Trademark Office is
not able to manufacture and compare products. See Best, 562 F.2d at 1255;
In re Brown, 459 F.2d 531, 535 (CCPA 1972).
Mori makes fiber-reinforced resin composite materials by treating SiC
whiskers with a silane coupling agent, mixing the treated whiskers with a
matrix resin, and curing the mixture (pp. 2-3, 6-7). "[T]he SiC whiskers
treated with a silane coupling agent possess improved interfacial wettability
with a matrix resin and chemically bond with it, thereby forming a strongly
bonded structure" (p. 5).
The Examiner asserts that the following portions of the Appellants'
Specification indicate that Mori' s crosslinking of a matrix resin with
functionalized SiC whiskers is functionally equivalent to the Appellants'
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Application 13/225,661
copolymerization of functionalized SiC whiskers with polymer precursors,
oligomers or crosslinking agents (Ans. 3-5):
In some aspects, silicon carbide (particulate or whiskers)
is surface-treated to render it receptive to covalent bonding with
a coupling agent. . . . The coupling agent also contains one or
more free organofunctional groups, such that the union of the
surface-treated silicon carbide and coupling agent forms
functionalized silicon carbide.
This functionalized silicon carbide can be chosen
specifically to be compatible with and have high affinity for the
polymer matrix to which it will be added. In some
embodiments, the organofunctional groups are covalently
bonded to a polymer matrix, e.g., by reacting the functionalized
silicon carbide with polymeric materials to cause crosslinking,
or by co-polymerizing the functional silicon carbide together
with polymer precursors. [i-fi-f 5---6]
In another aspect, inorganic whiskers are surface-treated
to render them receptive to a covalently bonded coupling agent.
. . . [T]he coupling agent possesses at least one
organofunctional group. The organofunctional group may be
bonded to a polymer matrix, e.g., by reacting the functionalized
inorganic material with polymer materials to cause
crosslinking, or by co-polymerizing the functionalized
inorganic material with polymer precursors. [i-f 7]
Those portions of the Appellants' Specification do not indicate that
crosslinking and copolymerization are functionally equivalent but, rather
indicate that they are alternatives. The Appellants' claims require the
co po 1 ymerizati on al temati ve.
The Examiner has not established that Mori' s product made by
crosslinking a matrix resin with functionalized inorganic whiskers is
identical or substantially identical to the Appellants' product made by
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Application 13/225,661
copolymerizing functionalized inorganic whiskers with polymer precursors,
oligomers or crosslinking agents. The Examiner, therefore, has not
established a prima facie case of anticipation by Mori of the Appellants'
claimed polymeric composite material. 1
Rejections under 35 U.S.C. § 103
The Appellants argue the claims as a group (App. Br. 7-10). We
therefore limit our discussion to one claim, i.e., claim 9. Claims 1, 3, 5, 8,
10, 11, and 14 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv)
(2012).
Kambe discloses polymeric composite materials which
include a monomer/polymer component, inorganic particles,
and linker compounds that bridge the inorganic particles and
the monomer/polymer. In the case of monomer units being
joined to the linker compound, a polymer is formed with the
formation of the composite. For simplicity in notation, the
monomer/polymer unit joined with the linker and assembled
into the composite will be referred to generally as a polymer,
although it is recognized that in some cases the unit can be a
monomer or polymer, such as a dimer, trimer or larger
polymer structures. [col. 5, 11. 18-28]
The linker compounds have two or more functional
groups. One functional group of the linker is suitable for
chemically bonding to the inorganic particles. Chemical
bonding is considered to broadly cover bonding with some
covalent character with or without polar bonding .... [col. 5,
11. 39--43]
1 Consequently, contrary to the Examiner's assertion (Ans. 3), the
Appellants need not provide evidence of difference between Mori' s and the
Appellants' products. See Thorpe, 777 F.2d at 697; Best, 562 F.2d at 1255.
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Application 13/225,661
[T]he inorganic particles can be present during the
polymerization process such that the functionalized inorganic
particles are directly incorporated into the polymer structure as
it is formed. [col. 5, 11. 59---62]
The inorganic particles generally include ...
metal/metalloid carbides .... [col. 6, 11. 16-21]
The linker molecules surface modify the inorganic particles,
i.e., functionalize the inorganic particles. [col. 6, 11. 40-41]
The linker compound is a multifunctional compound, for
example, a bifunctional compound, that chemically bonds to
both the inorganic particle and the polymer. [col. 7, 11. 51-54]
The inorganic particles can be bonded through the
linker compound into the polymer structure, or the particles
can be grafted to polymer side groups. [col. 8, 11. 11-13]
[A] composite structure 112 is shown in FIG. 4 in
which the polymerization takes place in the presence of the
surface modified inorganic particles. The particles become an
integral part of the polymer structure. . . . [T]he monomers
can include functional groups that bond to just linker
molecules and not to other monomers. In such an alternative
structure, the surface modified inorganic particles are integral
to the formation of a polymer structure in which the inorganic
particles and linkers function as repeat units within the
polymer. [col. 9, 1. 66 - col. 10, 1. 18]
The frame of the linker supporting the functional groups
is generally an organic compound, although it may also
include silyl and/or siloxy moieties. [col. 13, 11. 7-9]
The Appellants assert, regarding the rejection over Kim and Kambe,
that "neither [of the] references teaches or suggests a polymeric composite
material formed by copolymerizing polymer precursors, oligomers, or
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Application 13/225,661
crosslinking agents with functionalized SiC whiskers" (App. Br. 7-8) and,
with respect to the rejection over Murata and Kambe, that "[n]one of
Murata, Kambe, and Silquest describes or suggests a polymeric composite
material formed by copolymerizing polymer precursors, oligomers, or
crosslinking agents with functionalized inorganic whiskers" (App. Br. 10).
Those assertions are not well taken in view of Kambe' s above-stated
disclosures that the functionalized inorganic particles can bond covalently to
monomers to form a polymer comprising repeat units formed from the
functionalized inorganic particles (col. 5, 11. 18-20, 59---62; col. 8, 11. 11-13;
col. 10, 11. 14--18).
Accordingly, we are not persuaded of reversible error in the rejections
under 35 U.S.C. § 103.
DECISION/ORDER
The rejection of claims 1, 3, 5, 8-11, and 14 under 35 U.S.C. § 102(b)
over Mori as evidenced by Silquest is reversed. The rejections under
35 U.S.C. § 103 of claims 1, 3, 5, and 8 over Kim in view ofKambe and
claims 9-11 and 14 over Murata in view of Kambe as evidenced by Silquest
are affirmed.
It is ordered that the Examiner's decision is affirmed.
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
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