Ex Parte Sullivan et al

Patent Trial and Appeal Board

Oct 31, 2016

12712621 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121712,621 02/25/2010
133372 7590 11/02/2016
Kilpatrick Townsend & Stockton LLP/
W.L. Gore & Associates, Inc.
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
James P. Sullivan
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.
MI/329 3074
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES P. SULLIVAN and MICHAEL MCMANAWAY
Appeal2015-002131
Application 12/712,621
Technology Center 1700
Before GEORGE C. BEST, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed Feb. 25, 2010; Final Office
Action ("Final Act.") mailed Jun. 13, 2013; Examiner's Answer ("Ans.");
and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify W. L. Gore & Associates, Inc., as the real party in
interest. Br. 2. We apply our own page numbering to Appellants' un-
numbered Appeal Brief.
Appeal2015-002131
Application 12/712,621
BACKGROl.J1'-JD
The subject matter involved in this appeal relates to reinforced
elastomers. Spec 1. Claim 1 is reproduced from the Claims Appendix of the
Appeal Brief as follows:
1. A composition comprising an elastomer and discrete, flat
pieces of porous material distributed throughout said elastomer.
Each of claims 2-19 depends directly or indirectly from claim 1.
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 1-7, 11-17, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nasreddine4 and Suzuki.5
II. Claims 1, 2, 8-11, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cuscurida6 and Suzuki.
III. Claims 1, 2, and 11-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over \Vard7 and Suzuki.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the respective positions advanced by the Examiner and Appellants, we
determine that a preponderance of the evidence supports the Examiner's
determination that the applied prior art references would have rendered the
3 Final Act. 6-13; Ans 2-9. Additional grounds of rejection under 35 U.S.C.
§ 112 were withdrawn. Ans. 9.
4 US 2007/0197702 Al, published Aug. 23, 2007 ("Nasreddine").
5 US 4,454,249, issued Jun. 12, 1984 ("Suzuki").
6 US 4,301,110, issued Nov. 17, 1981 ("Cuscurida").
7 US 5,929,143, issued Jul. 27, 1999 ("Ward").
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Application 12/712,621
subject matter recited in claims 1-19 obvious to one of ordinary skill in the
art within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner's§ 103(a) rejections of the above claims for the reasons set forth
in the Final Action and the Answer. We add the following primarily for
emphasis and completeness.
I
With regard to Rejection I, Appellants argue the rejected claims as a
group. App. Br. 8-10; Reply Br. 2-3. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we select claim 1 as representative, and decide the
propriety of Rejection I based on the representative claim alone.
The Examiner found, and Appellants do not dispute, that N asreddine
discloses an elastomer composition reinforced with glass fibers, the
composition being intended for use in a molding process. Compare Final
Act. 6-7 with App. Br. 8-10; Reply Br. 2-3. Neither do Appellants dispute
the Examiner's finding that Suzuki teaches that "by replacing traditional
glass fiber reinforcing materials with discrete pieces of expanded PTFE8, it
is possible to produce a reinforced polymer material that is easier to mold."
Compare Final Act. 7 with App. Br. 8-10; Reply Br. 2-3. In light of these
teachings, the Examiner found that one of ordinary skill would have had
reason to substitute expanded PTFE for N asreddine' s reinforcing glass fibers
"in order to produce a reinforced polymer material that is easier to mold than
a composition comprising glass fiber filler." Final Act. 7.
Appellants' principal argument against Rejection I is that "Suzuki is
directed exclusively to incorporation of fragments into a plastic." App.
8 Polytetrafluoroethylene. See Final Act. 7.
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Appeal2015-002131
Application 12/712,621
Br. 9. Appellants contend there is "no teaching or suggestion of
incorporating the [PTFE] fragments into other materials, especially not
elastomers." Id. In their Reply Brief, Appellants add that "[p ]lastics and
elastomers have very different rheological behavior," but do not elaborate on
those purported differences or how any such difference might weigh against
the Examiner's finding in this case. 9 Reply Br. 2.
Appellants' arguments are not persuasive of reversible error. "[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Here, as the Examiner found, Final Act. 7; Ans. 3, both Nasreddine
and Suzuki are concerned with reinforced polymer compositions that are
moldable. See Nasreddine at i-f 60 ("The elastomeric composition according
to the present invention is especially suitable for injection molding ... ");
Suzuki at col. 1, 11. 21-21) ("It is an object of this invention to provide
reinforced plastic compositions which ... are easy to mold in a
comparatively short time."). In light of the substantial overlap in materials
(reinforced polymer compositions) and purpose (moldability), we are
persuaded that the evidence of record supports Examiner's finding that one
of ordinary skill would reasonably have expected Suzuki's technique of
improving moldability by substituting PTFE for glass fibers similarly would
have improved the moldability in Nasreddine's elastomer composition. See
9 Appellants do not particularly contest the Examiner's interpretation of the
term, "plastic," in Suzuki as being generic and inclusive of elastomers and
other polymers which are capable of being shaped or formed. Compare
Ans. 10 with Reply Br. 2-3.
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Appeal2015-002131
Application 12/712,621
also Nasreddine at i14 ("Improvements in the properties of HXNBR
[elastomer] are constantly sought, and often for this purpose new and
unconventional additives and compounds are mixed or blended with
HXNBR. "). Appellants' unsupported attorney argument that plastics and
elastomers significantly differ in rheological behavior is unavailing in that
regard. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
argument in a brief cannot take the place of evidence.").
Appellants further argue that Nasreddine "discloses only fine particle
fillers" whereas Suzuki "teaches large fragments of material as fillers."
App. Br. 8. However, Appellants do not point to any passage in Nasreddine
where any given dimensions are disclosed for the reinforcing glass fibers.
The Examiner found that N asreddine provides preferred size ranges for
certain agglomerated mineral particles, but is silent as to suitable dimensions
for the disclosed reinforcing glass fibers. Ans. 9-10. We fully agree with
the Examiner's reasoning that "Nasreddine's silence regarding the size of
the additional [glass fiber] filler materials cannot be taken as a teaching
away" from the substitution of Suzuki's PTFE pieces. Id. at 10.
Lastly, Appellants argue that "the surprising results achieved with the
present invention are sufficient to ... establish patentability for the subject
claims." App. Br. 9. Particularly, Appellants contend that "elastomers with
filler material as specifically defined in the subject claims demonstrate
dramatically better tensile strength, tear strength, and flexibility than one
skilled in the art could reasonably expect from the disclosures of the
references." App. Br. 9-10. Appellants point us to no factual evidence or
technical reasoning to support the conclusory statement that improvements
in the above-listed properties would have been unexpected. On the other
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Application 12/712,621
hand, the Examiner found-and Appellants do not dispute-that Suzuki
recognized the same property improvements obtained by incorporating
pieces of porous PTFE. Compare Ans. at 11-12 (citing Suzuki at col. 1,
11. 25-26; col. 3, 1. 59---col. 4, 1. 3) with Reply Br. 2-3. On this record, we
find Appellants' argument insufficient to demonstrate unexpected results.
For the foregoing reasons, we sustain Rejection I.
II, III
Appellants' arguments against Rejections II and III mirror those
presented and discussed above in connection with Rejections I and II. As
such, we sustain Rejections II and III for the reasons set forth above.
DECISION
The Examiner's decision rejecting claims 1-19 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.
AFFIRMED
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