RHODIA OPERATIONSDownload PDFPatent Trials and Appeals BoardDec 15, 20212021000451 (P.T.A.B. Dec. 15, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 14/968,156 12/14/2015 Audrey DI MARTINO R 11024-US-CNT 7443 68956 7590 12/15/2021 SOLVAY USA INC. 504 CARNEGIE CENTER CN 5203 PRINCETON, NJ 08540 EXAMINER TOLIN, MICHAEL A ART UNIT PAPER NUMBER 1745 NOTIFICATION DATE DELIVERY MODE 12/15/2021 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): MICHELE.RUTTER@SOLVAY.COM formalities-us-patents.iam@solvay.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AUDREY DI MARTINO ____________ Appeal 2021-000451 Application 14/968,156 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and JEFFREY B. ROBERTSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–3, 7, 10, and 12. See Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Rhodia Operations as the real party in interest (Appeal Br. 2). Appeal 2021-000451 Application 14/968,156 2 CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal (emphasis added to highlight key disputed limitations): 1. A method for impregnating a cloth, said method comprising: forming spherical or substantially spherical polyamide particles from a polyamide composition that exhibits a melt viscosity of between 0.5 and 50 Pa·s, as measured on the Newtonian plateau at a shear rate of 100 s-1 in a capillary rheometer at a temperature of 25°C above the melting point of the polyamide composition, said polyamide particles exhibiting a median diameter D50 of between 0.3 and 2 mm and a water content of less than 3000 ppm;depositing the polyamide particles onto a reinforcing cloth; and heating the cloth and polyamide particles to a temperature effective to at least partially melt the particles and impregnate the reinforcing cloth, wherein the polyamide composition comprises a polyamide and 1% to 25% by weight of a novolac resin. REFERENCES The Examiner relied upon the following prior art: Name Reference Date Rudolph US 4,570,359 Feb. 18, 1986 Jackson et al. US 7,226,553 B2 June 5, 2007 Endo et al. US 2007/0196648 A1 Aug. 23, 2007 Caramaro et al. US 2009/0151874 A1 June 18, 2009 Estur et al. US 2010/0285998 A1 Nov. 11, 2010 Orange et al. ’3262 US 2012/0322326 A1 Dec. 20, 2012 Heinz et al. EP0423564 A2 Apr. 24, 1991 Orange ’318 WO 2008/155318 A1 Dec. 24, 2008 Orange ’9203 US 2010/0215920 A1 Aug. 26, 2010 2 This is relied upon as the English translation of Orange ’786 (Final Act. 2). 3 This is relied upon as the English translation of Orange ’318 (Final Act. 9). Appeal 2021-000451 Application 14/968,156 3 Orange ’786 WO 2011/003786 A1 Jan. 13, 2011 REJECTIONS ON APPEAL Claims 1–3, 7, 10, and 12 are rejected under 35 U.S.C. § 103 as unpatentable over Orange ’786 in view of Caramaro, Endo, and Estur (Final Act. 2). Claims 7 and 10 are rejected under 35 U.S.C. § 103 as unpatentable over Orange ’786 in view of Caramaro, Endo, Estur, Rudolph, and Jackson (Final Act. 7). Claims 1–3, 7, 10, and 12 are rejected under 35 U.S.C. § 103 as unpatentable over Orange ’318 in view of Caramaro, Endo, Estur, and Heinz (Final Act. 9). Claims 7 and 10 are rejected under 35 U.S.C. § 103 as unpatentable over Orange ’318 in view of Caramaro, Endo, Estur, Heinz, Rudolph, and Jackson (Final Act. 11). OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. Appeal 2021-000451 Application 14/968,156 4 It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264– 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant’s main argument with respect to the rejection of claim 14 (whether based on Orange ’786 or alternately on Orange ’318/Heinz) focuses on the belief that the polyamide particle sizes exemplified in Camaro and spherical shape as exemplified in Estur are not relevant to Orange ’786’s, or to Orange ’318/Heinz’s, method of impregnating cloth with polyamide polymer such that there is no reason to combine these teachings (Appeal Br. 4–6, 9). Appellant also argues that the moisture content of the carbon fiber bundles of Endo is not relevant to Orange ’786’s (or to Orange ’318/Heinz) method of impregnating cloth with polyamide polymer such that there is no reason to combine these teachings (Appeal Br. 5, 9; Reply Br. generally). Appellant’s arguments are not persuasive of reversible error as they fail to consider the applied prior art as a whole and the inferences that one of 4 Appellant’s arguments are for the most part the same for the two alternate lines of rejection, whether based on Orange ’786 or alternately on Orange ’318/Heinz. To the extent Appellant argues about Heinz, we agree with the Examiner that Heinz’s teaching regarding the addition of novolac resin to polyamide is applicable to Orange ’318 (e.g., Ans. 18). Appeal 2021-000451 Application 14/968,156 5 ordinary skill would have made, as aptly explained by the Examiner (Ans. 12–16). As pointed out by the Examiner, Orange ’786 (alternatively Orange ’318) is silent as to the size and shape of the polyamide particles. Caramaro exemplifies polyamide particle diameters in an overlapping range for a similar purpose as Orange ’786 or Orange ’318 (e.g., Ans. 13). The use of diameter as a measurement in Caramaro implies spherical particles, but in any event, Estur is also relied upon to explicitly detail advantages of spherical particles (Ans. 6; Estur ¶¶ 3, 11, 25). One of ordinary skill in the art would have also readily appreciated that the size of the particles is a result effective variable (Ans. 5; Caramaro ¶¶ 13, 14). One of ordinary skill in the art would have appreciated that the moisture/water content is a result effective variable for making polymer composite materials from Endo, the Examiner noting that Jackson’s teaching of its water content for polyamide particles is within the claimed range and thus bolsters the Examiner’s determination in this regard (Ans. 14, 17; see also Ans. 8–9). Indeed, Appellant has not disputed the Examiner’s finding that Appellant describes using Jackson’s method/device for underwater granulation formation of its polyamide particles (Ans. 8, 17). “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1577–78 (Fed. Cir. 1990) (where the difference between the claimed Appeal 2021-000451 Application 14/968,156 6 invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). Appellant has not shown reversible error in the Examiner’s determination that one of ordinary skill in the art, using no more than ordinary creativity, would have used spherical polyamide particles having the claimed range of size and water content based on the overlapping size range exemplified in Estur and the overlapping water content range exemplified in Endo or Jackson; and because one of ordinary skill in the art would have appreciated that the size, shape and water content recited were known result effective variables. Appellant does not rely upon any objective evidence of criticality or unexpected results due to the claimed particle sizes and/or the claimed water content. It is well established that the burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was unexpectedly different. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See Peterson, 315 F.3d at 1330–31. Appellant has not explained sufficiently why the claimed subject matter is any more than the predictable use of a known shape and sizes of polyamide particles (Caramaro, Estur), and known desirability of Appeal 2021-000451 Application 14/968,156 7 minimizing the water content in composite manufacture (Endo). Cf. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” (quoting KSR, 550 U.S. at 420)). Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). One of ordinary skill would have readily inferred and appreciated from the applied prior art as a whole that using the claimed sizes and water content for the polyamide particles used in Orange ’786 or Orange ’318 would have been within the skill and creativity of one of ordinary skill in the art based on Caramaro, Endo, and Estur. With respect to claims 7 and 10, a preponderance of the evidence supports the Examiner’s obviousness determination of these claims based both on the Examiner’s reasonable interpretation of these claims as being no more than product by process limitations (e.g., Ans. 7, 16–17), and by the Examiner’s alternative reliance on Rudolph and Jackson (e.g., Ans. 8–9, 17– 18). Accordingly, we sustain all of the Examiner’s rejections on appeal. DECISION SUMMARY In summary: Appeal 2021-000451 Application 14/968,156 8 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 7, 10, 12 103 Orange ’786, Caramaro, Endo, Estur 1–3, 7, 10, 12 7, 10 103 Orange ’786, Caramaro, Endo, Estur, Rudolph, Jackson 7, 10 1–3, 7, 10, 12 103 Orange ’318, Heinz, Caramaro, Endo, Estur 1–3, 7, 10, 12 7, 10 103 Orange ’318, Heinz, Caramaro, Endo, Estur, Rudolph, Jackson 7, 10 Overall Outcome 1–3, 7, 10, 12 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation