Cytec Industries Inc.

Patent Trials and Appeals Board

May 7, 2021

2020003167 (P.T.A.B. May. 7, 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.
14/718,584 05/21/2015 James Francis Pratte 14016S-US-NP 9398
8015 7590 05/07/2021
CYTEC INDUSTRIES INC.
1937 WEST MAIN STREET
STAMFORD, CT 06902
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/07/2021 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):
Cheryle.Telesco@solvay.com
StamfordPatent@solvay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES FRANCIS PRATTE, ROBIN K. MASKELL,
JAMES MARTIN GRIFFIN, and JUDITH ANNE ELDER1
____________

Appeal 2020-003167
Application 14/718,584
Technology Center 1700
____________

Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6 and 8–15. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM IN PART.
BACKGROUND
The subject matter on appeal relates to fiber-reinforced polymer
composites, and, in particular, to composites that comprise amine-
functionalized polyaryletherketone (PAEK) particles. E.g., Spec. ¶ 1;

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Cytec
Industries Inc. Appeal Br. 2.
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Claim 1. Claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief:
1. A composite material comprising:
a curable thermoset matrix resin comprising at least one
thermoset resin;
reinforcement fibers impregnated with the curable thermoset
matrix resin;
particles of an amine-functionalized polyaryletherketone
(PAEK) polymer or copolymer thereof,
wherein said amine-functionalized polyaryletherketone (PAEK)
polymer or copolymer has a weight average molecular weight
(Mw) of 26,000 to 162,000 as determined by gel permeation
chromatography,
wherein the particles comprise amine functional groups on the
particles that are capable of forming covalent bonds with the
thermoset resin and the particles are substantially spherical in
shape with an aspect ratio (R) of about 1 to about 1.5.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1, 2, 4–6, and 8–15 over Rogers (US 2012/0107560 A1,
published May 3, 2012), Towle (US 2012/0263953 A1, published Oct. 18,
2012), and Matzner ’424 (US 4,959,424, issued Sept. 25, 1990), as
evidenced by Halahmi (US 2007/0246686 A1, published Oct. 25, 2007).
2. Claim 3 over Rogers, Towle, Matzner ’424, and Matzner ’530 (US
5,084,530, issued Jan. 28, 1992), as evidenced by Halahmi.

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ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections of
claims 1–6, 8–10, and 12–15. Accordingly, we affirm the rejections of those
claims for reasons set forth below, in the Final Action dated May 22, 2019,
and in the Examiner’s Answer. However, for reasons set forth below, we
reverse the Examiner’s rejection of claim 11.
The Appellant presents separate arguments for claim 1, 4, and 11. We
address those claims below. The remaining claims on appeal depend from
claims 1 or 4 and, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), will stand or fall with the claim from which they depend.
Claim 1. The Examiner finds, and the Appellant does not dispute,
that Rogers teaches a composite material comprising each structural element
of claim 1 except that Rogers teaches the use of polyetheretherketone
(PEEK) and polyetherketoneketone (PEKK) polymer particles, rather than
substantially spherical amine-functionalized PAEK polymer particles as
recited by claim 1. Ans. 4–5.
The Examiner finds that Towle discloses PEKK polymer particles that
have aryl groups and therefore constitute PAEK polymers. Id. at 5. The
Examiner finds that Towle’s particles are substantially spherical in shape
with R values that fall within the scope of claim 1. Id. The Examiner finds
that Towle teaches the use of its particles to impregnate fiber composites,
and that Towle’s particles have excellent mechanical properties. Id. at 5–6.
The Examiner determines that it “would have been obvious . . . to use [the]
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particles of Towle as the toughening particles in Rogers . . . in order to
improve mechanical properties.” Id. at 6.
The Examiner acknowledges that the PAEK particles of Rogers as
modified by Towle do not include amine functional groups. Id. at 6.
The Examiner finds that Matzner ’424 teaches amino-terminated
PAEK polymers, and that Matzner ’424 teaches that “incorporation of amino
groups maintains beneficial properties of [PAEK], however reduces high
melt viscosity of [PAEK], thereby making [PAEKs] suitable for practical
purpose by reducing fabrication difficulties.” Id. at 7. The Examiner
determines that it would have been obvious in view of Matzner ’424 to
incorporate amine functional groups into PAEK polymers “in order to
reduce[] high melt viscosity of [PAEK], thereby making [PAEKs] suitable
for practical purpose by reducing fabrication difficulties.” Id.
As to the weight average molecular weight recited by claim 1, the
Examiner finds that Matzner ’424’s amino-terminated PAEK polymers have
a “molecular weight of at least 1194,” and that “[t]he molecular weight of
diamino terminated [PAEK] overlaps with [the] presently claimed molecular
weight.” Id. at 6. The Examiner acknowledges that Matzner ’424 discloses
“number average molecular weight” as opposed to “weight average
molecular weight,” as recited by claim 1, but the Examiner finds that, “given
the broad range of molecular weight disclosed by Matzner . . . and the
relationship between number average (Mn) and weight average (Mw)
molecular weight (i.e. Mw/Mn>1), it is obvious or inherent that molecular
weight of Matzner . . . will overlap with presently claimed weight average
molecular weight.” Id. at 6–7.
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As to the final “wherein” clause of claim 1 concerning covalent
bonding of the amine functional groups to the thermoset resin, the Examiner
finds that such bonding would have been inherent in composites taught or
suggested by the combined prior art because the prior art teaches thermoset
resins (e.g., epoxy) and amine-functionalized PAEK polymers that naturally
yield the recited function. Id. at 7.
In view of those and other findings less material to the issues raised
by the Appellant, the Examiner concludes that the subject matter of claim 1
would have been obvious. See id. at 4–7.
The Appellant first argues that Matzner ’424 “is not directed to
making substantially spherical particles,” and “[t]here is no evidence to
establish that Matzner’s method is capable of making substantially spherical
PAEK particles.” Appeal Br. 4–5.
That argument is not persuasive of reversible error because the
Examiner relies on Towle’s method of making PAEK particles, not
Matzner ’424’s. See Ans. 9–10. The Appellant provides no reason to
believe that incorporating a limited number of amine functional groups (e.g.,
only as terminal groups as suggested by Matzner ’424) into the composition
and method of Towle would change the shape of the resulting particles,
which Towle expressly describes as spherical. See Towle ¶ 68.
The Appellant also argues that the Examiner has not adequately
established a reason to incorporate Matzner ’424’s amine functional groups
into the composition of Towle/Rogers because the high melt viscosity issues
of Matzner ’424 are unique to fabrication of molded articles, which Towle
and Rogers allegedly do not concern. See Appeal Br. 5.
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That argument is not persuasive of reversible error. As the Examiner
explains, Ans. 11 (citing Rogers ¶ 52), Rogers discloses molding.
Moreover, we discern no reason to reject the Examiner’s finding that
reducing high melt viscosity, as taught by Matzner ’424, would generally be
beneficial in improving dispersibility, surface application, and surface
impregnation, which are relevant to the compositions and methods of the
combined prior art. Id. The Appellant does not meaningfully address those
findings.
The Appellant also argues that “Matzner does not disclose PAEK
oligomers having a weight average molecular weight (Mw) of 26,000 to
162,000,” as recited by claim 1. Appeal Br. 5. The Appellant acknowledges
that Matzner ’424 discloses a number average molecular weight of at least
1200, but argues that Matzner ’424’s working examples have “very low Mw,
at most 7000.” Id.
That argument is not persuasive of reversible error in the Examiner’s
rejection. The Appellant does not dispute that the range disclosed by the
prior art overlaps with the claimed range. “[E]ven a slight overlap in range
establishes a prima facie case of obviousness.” See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). As to Matzner ’424’s working examples, it is
long established that “a reference is not limited to the disclosure of specific
working examples.” Cf. In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Moreover, Towle expresses the desirability of “high molecular weight”
polymers, e.g., Towle ¶ 65, and discloses methods for “control[ling] the
resulting molecular weight of the polymer,” id. ¶ 58.
The Appellant also quotes the Examiner’s finding that Matzner ’424’s
amine-functionalized PAEK polymers have a number average molecular
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weight of at least 1194, and asserts that “there is no evidence to support the
Examiner’s calculation for the Mw. The Examiner fails to explain where
those numbers in the calculation come from.” Appeal Br. 5–6.
That argument is not persuasive. As shown in the Appellant’s
quotation of the Examiner’s analysis, Appeal Br. 6, the Examiner expressly
states that the 1200 figure comes from Matzner ’424 at 14:43–46, and that,
when Matzner ’424’s halogen terminal groups are replaced with amino
terminal groups as suggested by Matzner ’424, the 1200 figure becomes
1194. See Ans. 6 (providing calculation).
The Appellant raises no other arguments as to claim 1. We affirm the
Examiner’s rejection of claim 1. Consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), and because the Appellant presents no separate arguments
concerning claims 2, 3, 5, 6, 8–10, or 12–15, which depend from claim 1, we
likewise affirm the Examiner’s rejection of claims 2, 3, 5, 6, 8–10, and 12–
15.
Claim 4. Claim 4 depends from claim 1 and (1) specifies structures
for the amine-functionalized PAEK polymer of claim 1, and (2) specifies
that the polymer has between 15 and 200 repeat units. See Appeal Br.
(Claims Appendix).
The Examiner finds, and the Appellant does not dispute, that
Matzner ’424 discloses structures that fall within the scope of claim 4.
Ans. 6 (¶ 14). As to the claim requirement of 15 to 200 repeat units (i.e., “n
is an integer from 15 to 200”), the Examiner finds that “it is inherent or
obvious that . . . diamino terminated [PAEK] of Matzner . . . has n from 15
to 200, absent evidence to the contrary.” Id.
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In the Appeal Brief, the Appellant argues that Matzner ’424 “fails to
mention what ‘n’ equals,” and that “there is no evidence to support such
finding of inherency or obviousness by the Examiner. The burden is on the
Examiner to establish the alleged inherency and obviousness.” Appeal
Br. 7.
In the Examiner’s Answer, the Examiner explains that, given
Matzner ’424’s disclosure of overlapping molecular weights and structures
that fall within the scope of claim 4, it necessarily follows that Matzner
’424’s polymers, having structures and molecular weights that fall within the
scope of claim 4, “have to also possess ‘n’ as claimed.” Ans. 14.
The Appellant files a Reply Brief but does not contest the Examiner’s
additional explanation in the Answer. See generally Reply Br.
We are not persuaded of reversible error in the Examiner’s rejection
of claim 4. Given that the Appellant does not contest the Examiner’s finding
that Matzner ’424 teaches structures within the scope of claim 4, and our
determination that the record supports the Examiner’s finding that
Matznerá’424 teaches or suggests molecular weight ranges that overlap
those of claim 4, we discern no reason to reject the Examiner’s finding that
structures rendered obvious by the combined prior art—i.e., polymers that
have both a structure and a molecular weight within the scope of the claim—
necessarily have an “n” value that falls within the scope of claim 4.
On this record, we affirm the Examiner’s rejection of claim 4.
Claim 11. Claim 11 depends from claim 4 and (1) further limits the
structure of the amine-functionalized PAEK polymer to a particular
trisubstituted branched structure, and (2) specifies that “the branched unit(s)
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is/are present in a molecular percentage of 0.5% to 25%.” Appeal Br.
(Claims Appendix).
The Examiner finds that Towle discloses that the “type of substitution
(1,3 or 1,4) on aromatic units in [PAEKs] can influence” various properties
of the polymer, and that “the proportion of 1,3 or 1,4 linked aromatic units
influence[s] processability of polymers.” Ans. 7–8. The Examiner finds
that Towle teaches that “the proportion can be varied depending on intended
use of the polymer.” Id. at 8. The Examiner determines that it would have
been obvious “to vary proportion of 1,3,5-benzene tricarbonyl unit . . .
depending on the desired melting temperature.” Id.
The Appellant argues that it is not adequately clear how the Examiner
transitions from a discussion of 1,3 and 1,4 substituted aromatic units to a
finding that the prior art teaches 1,3,5-benzene tricarbonyl units. Appeal
Br. 8 (“[I]t is not known where the Examiner finds support for ‘1,3,5-
benzene tricarbonyl unit.’”).
In the Examiner’s Answer, the Examiner responds that “Towle is used
for its teaching that both the position of aromatic units and proportion of
aromatic units influence properties. Accordingly, it would have been
obvious to one of ordinary skill in the art to vary proportion of 1,3,5-benzene
tricarbonyl unit, including that presently claimed.” Ans. 15.
We reverse the rejection of claim 11 because, consistent with the
Appellant’s argument, it is not adequately clear how the Examiner is finding
a disclosure of 1,3,5-benzene tricarbonyl from Towle’s disclosure of 1,3 and
1,4 substituted aromatic units. The Examiner does not provide an adequate
explanation of why, in view of Towle, a person of ordinary skill in the art
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would have been motivated to move from disubstituted units to trisubstituted
units, or, specifically, to the structure of claim 11.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§ References Affirmed Reversed
1, 2, 4–6,
8–15 103
Rogers, Towle,
Matzner ’424
1, 2, 4–6, 8–10,
12–15 11
3 103
Rogers, Towle,
Matzner ’424,
Matzner ’530
3
Overall
Outcome 1–6, 8–10, 12–15 11
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART