Ex Parte Tutin et al

Board of Patent Appeals and Interferences

May 14, 2007

10453932 (B.P.A.I. May. 14, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIM TUTIN,
AUGIE RODRIGUEZ, JOHN HINES,
KURT GABRIELSON, CORNEL HAGIOPOL,
RAMJI SRNINIVASAN AND RANDY WHITE
____________

Appeal 2007-0106
Application 10/453,932
Technology Center 1700
____________

Decided: May 14, 2007
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 4-27. Claims 1
and 11 are illustrative:
1. An aqueous binder composition for making glass fiber products
comprising a substantially infinitely water-dilutable or dispersible
thermosetting esterification reaction adduct of a monomeric polycarboxylic
Appeal 2007-0106
Application 10/453,932

acid component and a monomeric polyol component, wherein at least one of
the monomeric polycarboxylic acid component and the monomeric polyol
component has an average functionality of at least 2.2 and wherein said
adduct has residual carboxylic and hydroxyl groups and an acid number of
100 or above.

11. A method for binding together a loosely associated mat of glass
fibers comprising (1) contacting said glass fibers with an aqueous binder
composition comprising a substantially infinitely water-dilutable or
dispersible thermosetting esterification reaction adduct of a monomeric
polycarboxylic acid component and a monomeric polyol component,
wherein at least one of the monomeric polycarboxylic acid component and
the monomeric polyol component has an average functionality of at least 2.2
and wherein said adduct has residual carboxylic and hydroxyl groups and an
acid number of 100 or above, and (2) heating said aqueous binder
composition at an elevated temperature sufficient to effect cure.

The Examiner relies upon the following reference as evidence of
obviousness:
Arkens US 6,221,973 B1 Apr. 24, 2001
Appellants' claimed invention is directed to an aqueous binder
composition for making glass fiber products, and a method for binding
together glass fibers using the binder composition. The binder composition
comprises a reaction adduct of a monomeric polycarboxylic acid component
and a monomeric polyol component. The method entails contacting the
glass fibers with the adduct and then heating the binder composition at a
sufficient temperature to cure it.
The appealed claims 1 and 4-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Arkens.
2
Appeal 2007-0106
Application 10/453,932

Appellants do not set forth a separate argument for any particular
claim on appeal. Accordingly, all of the appealed claims stand or fall
together with claims 1 and 11.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we fully concur with the Examiner that the claimed
subject matter would have been obvious to one of ordinary skill in the art
within the meaning of § 103 in view of the applied prior art. Accordingly,
we will sustain the Examiner's rejection for essentially those reasons
expressed in the Answer, and we add the following primarily for emphasis.
Arkens, like Appellants, discloses an aqueous binder composition for
making glass fiber products by curing a monomeric polycarboxylic acid
component and a monomeric polyol component while in contact with the
glass fibers. Also like Appellants, Arkens may use acetic acid, butane
tricarboxylic acid and citric acid as the monomeric polycarboxylic acid
component, and 1,4-cyclohexane diol, catechol, diethanolamine, ethylene
glycol, pentaerythritol, sorbitol, triethanolamine and trimethylol propane as
the monomeric polyol component (See Arkens at col. 3, ll. 49 et seq. and col.
6, ll. 1-6). While Appellants contend that Arkens does not disclose
contacting an adduct of the components with the glass fibers, but only the
individual components in composition, the Examiner correctly points out
that Arkens specifically teaches that "the composition may be first heated at
a temperature and for a time sufficient to substantially dry but not
substantially cure the composition and then heated for a second time at a
higher temperature and/or for a longer period of time to effect curing" (col.
8, ll. 51-55). Hence, it is clear to us that Arkens contemplates a partial
3
Appeal 2007-0106
Application 10/453,932

condensation reaction between the components before the final curing, and
the present claims on appeal do not require a full curing of the composition
before application to the glass fibers. Indeed, the claims specifically call for
curing the composition after application to the fibers. Hence, we perceive
no meaningful distinction between Appellants' formation of an esterification
reaction adduct that is then applied to the fibers and Arkens' partial reaction
of the very same components before a final cure after application. We agree
with the Examiner that it is reasonable to conclude that the initial heating or
"B-staging" performed by Arkens results in the formation of some
esterification adduct in the composition that is subsequently applied to the
glass fibers. Appellants have not demonstrated otherwise on this record.
Also, in our view, it would have been a mater of obvious, routine
experimentation for one of ordinary skill in the art to determine the specific
degree of partial reaction via drying of the composition before application to
the fibers to optimize handling, contingent upon the specific composition
selected for application.
We are not persuaded by Appellants' argument that "[n]othing in
Arkens suggests that both the polyacid and polyol should be replaced in the
binder by the product (adduct) of an esterification reaction" (page 5 of Brief,
second para.). As explained above, Arkens, in fact, suggests a partial
reaction before application to the fibers which would necessarily form some
adduct. The Examiner correctly points out that Arkens discloses that "[t]he
polyacid must be sufficiently nonvolatile that it will substantially remain
available for reaction with the polyol in the composition during heating and
curing and operations" (col. 3, ll. 46-49, emphases added). It is reasonable to
4
Appeal 2007-0106
Application 10/453,932

conclude that the heating step taught by Arkens before curing necessarily
forms some esterification adduct, and Appellants have not demonstrated
otherwise. Consequently, we do not subscribe to Appellants' position that
"[t]he reaction between these separate components [of Arkens] does not take
place until the binder is cured on the substrate" (page 5 of Brief, third para.).
As for Appellants' argument that "[n]owhere does Arkens disclose or even
suggest using an esterification adduct with an acid number above 100
(preferably above 300) as the binder" (id.), it logically follows that the
ultimate curing of both Appellants' and Arkens' composition comprising the
same components will result in the same cured binder.
Also, since Appellants and Arkens react the same components to
form a cured binder for glass fibers, we agree with the Examiner that it
would have been prima facie obvious to form the adduct before or after the
composition is applied to the glass fibers, taking into account the particular
handling properties of the composition before and after partial and full
reaction. In general, it is a matter of obviousness for one of ordinary skill in
the art to reverse the order of steps in a known process in the absence of
unexpected results.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the Arkens
reference.
In conclusion, based on the foregoing and the reasons well-stated by
the Examiner, the Examiner's decision rejecting the appealed claims is
affirmed.
5
Appeal 2007-0106
Application 10/453,932

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).
AFFIRMED

cam

BANNER & WITCOFF, LTD.
1100 13th Street, N.W.
Suite 1200
Washington, DC 20005-4051
6