RHODIA OPERATIONS

Patent Trials and Appeals Board

Dec 15, 2021

2021000451 (P.T.A.B. Dec. 15, 2021)

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).
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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).
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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.
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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).
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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
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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
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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:
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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