Ex Parte Wolff Fabris et al

Patent Trial and Appeal Board

Dec 26, 2018

13243068 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/243,068 09/23/2011 Felipe WolffFabris
423 7590 12/28/2018
HENKEL CORPORATION
One Henkel Way
ROCKY HILL, CT 06067
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.
H 8210 PCT/US 9434
EXAMINER
THOMPSON, CAMIE S
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FELIPE WOLFF F ABRIS,
ANDREAS FERENCZ, KATIA KLOPHAUS,
and VOLKER ALTSTADT
Appeal2017-001524
Application 13/243,068 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 1-5, 7-12, 14, 16, and 18 under 35 U.S.C.
1 The real party in interest is said to be Henkel AG & Co. KGaA. Appeal Brief
dated May 31, 2016 ("App. Br."), at 1.
Appeal2017-001524
Application 13/243,068
§ I03(a) as unpatentable over Turpin et al. 2 in view ofDoring. 3 A hearing was
held on November 19, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims on appeal are directed to a method for manufacturing a fiber-
containing composite material comprising the steps of (a) providing fibers, (b)
treating the fibers with thermoplastic particles, ( c) contacting the treated fibers
with a composition comprising an epoxy resin and an initiator to form a fiber-
containing agent, and ( d) curing the fiber-containing agent by irradiation (i.e., non-
thermally). See Spec. ,r 85 ( disclosing that "' [ n ]on-thermally' is understood in the
present invention as hardening initiated by radiation, a thermal initiation brought
about by specifically and actively delivered thermal energy not being
encompassed").
The Appellants disclose:
A particular advantage of non-thermal hardening is that because
of the high reactivity of the initiators used, effective hardening can
already be brought about at relatively low temperatures in relatively
short periods of time. The result is that there is only a very low level
of thermal stress on the respective agent, so that the thermoplastic
particles retain their particulate nature during the hardening
operation. . . . [T]he particulate nature of the thermoplastic particles
brings about particularly effective intralaminar toughness
modification of the fiber-containing composite material of the present
invention.
Spec. ,r 83 ( emphasis added).
2 US 5,248,550, issued September 28, 1993 ("Turpin").
3 W02008064959 (A2), dated June 5, 2008 ("WO 959"). The Examiner relies on
US 2010/0113639 Al, published May 6, 2010 ("Doring"), as evidence of the
WO 959 disclosure. The Appellants do not object. See App. Br. 4, n. *. Therefore,
in this Decision on Appeal, we also rely on Doring as evidence of the WO 959
disclosure.
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Appeal2017-001524
Application 13/243,068
Independent claim 1 is reproduced below from the Claims Appendix to the
Appeal Brief.
1. A method for manufacturing a fiber-containing
composite material, steps of which comprise:
a) providing fibers,
b) treating the fibers with thermoplastic particles selected
from solid rubbers, block copolymers, polysulfones,
polyethersulfones, polyetherketones, polybutylene terephthalates,
polycarbonates, polyetherimides, polyalkylenes, polyamides,
polyesters, polyamide-imides, polyaryl ethers, or polyarylates,
c) contacting the treated fibers obtained in step b) with a
composition comprising at least one epoxy resin, and at least one
initiator that has a neutral charge and contains one or more cationic
metal-olefin complexes, to form a fiber-containing agent, and
d) curing the fiber-containing agent obtained in step c) by
irradiation selected from X-radiation, gamma rays, electron beams, or
UV rays, sufficient to form a fiber-containing composite material,
wherein at least 90% of the thermoplastic particles, based on
the total number of thermoplastic particles, have an average particle
size of 20 µm to 70 µm.
App. Br. 14--15.
B. DISCUSSION
The Examiner finds that Turpin discloses applying gel coated thermoplastic
resin particles to reinforcement fibers, such as carbon fibers, to form a pre-preg or
composite. Final Act. 2. 4 The Examiner finds that the thermoplastic resin particles
can include polyimide, polyether sulfone, and polycarbonate. Final Act. 3. The
Examiner finds that the treated reinforcement fibers can be mixed with a
thermosetting resin, such as epoxy, and subsequently cured. Final Act. 3.
4 Final Office Action dated December 3, 2015.
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Appeal2017-001524
Application 13/243,068
The Examiner finds Turpin does not disclose the claimed initiator. Final
Act. 3. The Examiner, however, finds Doring discloses a composite comprising
non-woven fibers that are coated with an epoxy resin system comprising an
initiator within the scope of claim 1. Final Act. 3. The Examiner finds that the
initiator "provide[s] good shelf stability." Final Act. 3. Therefore, the Examiner
concludes that "[ o ]ne of ordinary skill in the art would be motivated to use the
epoxy resin composition of [Doring] as the epoxy resin system in Turpin for the
benefit of having a composite that has good shelf stability." Final Act. 4.
The Appellants argue that the claimed initiators "cure the epoxy resin under
irradiation rather than heat, [whereby] the thermoplastic particles remain in
particulate form, which improves toughness properties." App. Br. 12. The
Appellants argue that Turpin and Doring do not establish a prima facie case of
obviousness. App. Br. 12. Although Doring discloses a radiation curable initiator
as claimed (Doring ,r 107), the Appellants argue that Turpin discloses thermal
curing conditions. The Appellants argue that "the thermal curing conditions of
Turpin are such that the 'gel coated thermoplastic particles become soluble in the
base thermoset resin and will readily pass into solution therein"' (Turpin, col. 5, 11.
64---68). App. Br. 12-13.
The Appellants' argument is persuasive of reversible error. Turpin's pre-
preg is "subjected to curing, as by heating at a temperature, e.g., of the order of
about 350° F., and under pressure, e.g., about 85 psi." Turpin, col. 5, 11. 47-51.
Under those curing conditions, Turpin discloses that "the gel coated thermoplastic
particles become soluble in the base thermoset resin and will readily pass into
solution therein." Turpin, col. 5, 11. 64---68; see also Turpin, col. 7, 11. 44--52
(disclosing that when the pre-preg is cured at 350° F. and 85 psi, "the gel coated
polyimide particles are dissolved within the bismaleimide thermoset matrix with
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Appeal2017-001524
Application 13/243,068
no clear lines of demarcation between the polyimide thermoplastic particles and
the bismaleimide thermoset matrix").
In contrast, the Examiner finds that Doring "discloses that the initiator is
curable by means of radiation selected from X-rays, gamma rays, electron beams
or UV rays" (i.e., non-thermally). Final Act. 3 (citing Doring ,r 107). On this
record, the Examiner has failed to explain, in any detail, why curing Turpin's pre-
preg by irradiation using the initiator disclosed in Doring would have been
expected to dissolve the thermoplastic resin particles in the base thermoset resin as
disclosed in Turpin. For that reason, the obviousness rejection is not sustained. 5
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("the examiner bears the
initial burden ... of presenting a prima facie case of unpatentability").
C. DECISION
The Examiner's decision is reversed.
REVERSED
5 In view of our grounds for reversal, it is not necessary to address the Appellants'
argument that claim 1 excludes the gel coated thermoplastic particles disclosed in
Turpin. See App. Br. 8. Nonetheless, we note that the Appellants disclose that
"[a] 'thermoplastic particle' is understood for purposes of the present invention as
a particulate element, solid at 20°C and 1013 mbar, that is made up substantially or
completely of one, or a mixture of different, thermoplastic polymer( s ). " Spec. ,r 29
(emphasis added); see also York Prods., Inc. v. Central Tractor Farm & Family
Ctr., 99 F.3d 1568, 1572-73, (Fed. Cir. 1996) ("Ordinarily ... 'substantially'
means 'considerable in ... extent,' American Heritage Dictionary Second College
Edition 1213 (2d ed. 1982), or 'largely but not wholly that which is specified,'
Webster's Ninth New Collegiate Dictionary 1176 (9th ed. 1983)."). During the
hearing, counsel for the Appellants indicated that a thermoplastic particle made up
substantially of a thermoplastic polymer does not include a coated thermoplastic
particle, such as the gel coated thermoplastic particle disclosed in Turpin.
Transcript 3, 1. 17--4, 1. 18.
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