11245668 (B.P.A.I. Feb. 21, 2012)

Ex Parte Shooshtari et al

Board of Patent Appeals and InterferencesFeb 21, 2012

11245668 (B.P.A.I. Feb. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/245,668 10/07/2005 Kiarash Alavi Shooshtari 7530 4789 29602 7590 02/21/2012 JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON, CO 80162-5005 EXAMINER EASHOO, MARK ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 02/21/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KIARASH ALAVI SHOOSHTARI and JAWED ASRAR __________ Appeal 2010-012544 Application 11/245,668 Technology Center 1700 ____________ Before CHUNG K. PAK, LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012544 Application 11/245,668 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 21, 22, and 26-31. The rejection of claims 32 and 35-39 has been withdrawn by the Examiner (Ans. 3, 6). We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is directed to a process of binding fiberglass using a composition that forms a polyacetal or polyketal that undergoes cross-linking upon curing to form a water-insoluble resin binder which exhibits good adhesion to glass (Spec. 1: 7-14). Claim 21 is illustrative: 21. A process for binding fiberglass comprising providing on said fiberglass a coating of a composition comprising an acid-catalyzed reaction product of a multi- aldehyde or multi-ketone with a multihydric alcohol in the form of a polyacetal or polyketal, and thereafter curing said composition while present as a coating on said fiberglass to form a water-insoluble resin binder which exhibits good adhesion to glass. Appellants appeal the following rejections: 1. Claims 21, 22, and 26-29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Miyake (US 2004/0166449 A1 issued Aug. 26, 2004) in view of Sinnott (US 3,215,577 issued Nov. 2, 1965). 2. Claims 30 and 31 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Miyake in view of Sinnott, and Ichikawa (US 3,978,092 issued Aug. 31, 1976). Appeal 2010-012544 Application 11/245,668 3 ISSUE Did the Examiner reversibly err in failing to explain how the combined teachings of Miyake and Sinnott would have suggested a process of binding fiberglass comprising providing a coating of polyacetal to the fiberglass and curing the polyacetal to form a “resin binder” as that term is defined on page 2, lines 7-9 of the Specification? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES Appellants argue that Sinnott does not teach binding fiberglass as required by the claims (App. Br. 4). Appellants argue that Sinnott is directed to a process of embedding fiberglass in layer upon layer of polymer where the process is operated such that the resin fills all the voids or spaces between adjacent fibers (id. at 4-5). Appellants argue that “binder resin” is defined in the Specification as not a space-filling, matrix resin but rather merely a coating resin on the fiberglass, particularly the junctions of the fibers (id. at 4). Appellants contend that the claimed recitation of “binding” differentiates over the process disclosed by Sinnott (id. at 5). The Examiner responds that the claim only requires “providing on said fiberglass a coating” (Ans. 6). The Examiner contends that whether or not Sinnott teaches the coating also filling the spaces between adjacent fibers is “irrelevant” because a coating is applied to the fiberglass. Id. The Examiner contends that the fiberglass will be bound according to the accepted use. Id. We agree with Appellants’ arguments. Claim 21 recites a process for binding fiberglass that includes providing a coating of a polyacetal Appeal 2010-012544 Application 11/245,668 4 composition on the fiberglass and curing to form a water-insoluble “resin binder.” The term “binder resin” is defined by Appellants as “not space- filling, but rather coat[ing] only the fibers, and particularly the junctions of fibers” (Spec. 2: 7-9). The Specification distinguishes “binder resins” from “matrix resins” that fill the entire interstitial space between fibers, resulting in a dense, fiber reinforced product where the matrix must translate the fiber strength properties to the composite (id. at 2: 3-7). As properly construed, the process of binding fiberglass of claim 21 requires that the fiberglass fibers be coated with a polyacetal resin that is cured to form fiberglass coated with water-insoluble binder resin in which the interstitial space between fibers is not filled with resin. The Examiner’s interpretation of the claim as merely requiring a coating on the fiberglass does not account for Appellants’ definition of “binder resins” in the Specification. The Examiner has not explained how Sinnott’s process for forming a tape of fiberglass encapsulated by resin (i.e., a matrix resin) would have rendered obvious Appellants’ claimed process that forms a binder resin on fiberglass. The Examiner’s finding that Appellants’ argument regarding Sinnott’s teaching to fill the spaces between adjacent fibers is “irrelevant” fails to account for or address Appellants’ Specification definition of “binder resins.” As argued by Appellants, Sinnott teaches that the process applies layers of resin to the glass fibers to form a tape and that the coating process rolls the resin “to work the resin material uniformly throughout the thickness of the tape and fill all of the voids or spaces between adjacent filaments” (Sinnott, col. 2, ll. 67-72). The Examiner has not explained why or how Appeal 2010-012544 Application 11/245,668 5 Sinnott’s process would have been modified to arrive at the claimed process of binding fiberglass by forming a “resin binder” as recited in claim 21. For the above reasons and on this record, we reverse the Examiner’s § 103 rejections of claims 21, 22, and 26-31. DECISION The Examiner’s decision is reversed. ORDER REVERSED bar