Ex Parte Baidak et al

Patent Trial and Appeal Board

Jun 15, 2016

12787719 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121787,719 05/26/2010
8015 7590 06/17/2016
CYTEC INDUSTRIES INC
1937 WEST MAIN STREET
STAMFORD, CT 06902
FIRST NAMED INVENTOR
Alexandre A. BAIDAK
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.
09001S-US-NP 5178
EXAMINER
MCCULLEY, MEGAN CASSANDRA
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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):
StamfordPatent@solvay.com
Cheryle.Telesco@solvay.com
Rocio.Ramos@solvay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDRE A. BAIDAK and
PATRICK TERENCE MCGRAIL
Appeal2015-000477
Application 12/787,719
Technology Center 1700
Before CHUNG K. PAK, BEYERL YA. FRANKLIN, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, 7, 11-16, 18-23 and 25-27. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In our decision below, we refer to the Final Office Action appealed from,
mailed September 6, 2013 (Final Act.), the Appeal Brief filed February 3,
2014 (Appeal Br.), the Examiner's Answer mailed August 4, 2014 (Ans.),
and the Reply Brief filed October 2, 2014 (Reply Br.).
2 Appellants identify the real party in interest as Cytec Technology Corp.
Appeal Br. 2.
Appeal2015-000477
Application 12/787,719
STATEMENT OF CASE
The claims are directed to engineered crosslinked thermoplastic
particles for interlaminar toughening of composite materials. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
14. An engineered crosslinked thermoplastic particle
comprising a crosslinked network formed by reacting (a) a
thermoplastic polymer having backbone or end functional groups
with (b) a polyfunctional cross linking agent that is reactive with
the functional groups of the thermoplastic polymer and has a
reactivity of two or greater, and
wherein the engineered crosslinked thermoplastic particle
is in a particulate form adapted to be combined with an uncured
thermosetting resin or dispersed in a fiber preform without
matrix resin, and is capable of swelling in an uncured
thermosetting resin.
Claims Appendix at Appeal Br. 12.
REJECTIONS
The Examiner made the follo\~1ing rejections:
A. Claims 14--16 and 27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Shibuya. 3 Final Act. 2.
B. Claims 1, 2, 7, 11-13, and 26 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Shibuya in
view ofBoyd.4 Id. at 4.
C. Claim 18 stands rejected under 35U.S.C.§103(a) as being
unpatentable over Shibuya in view Carter. 5 Id. at 6. Id.
3 Shibuya et al., US 6,531,568 B 1, issued March 11, 2003 (hereinafter
Shibuya")
4 Boyd et al., US 5,189,116, issued February 23, 1993 (hereinafter "Boyd").
5 Carter et al., US 2007/0196619 Al, published August 23, 2009 (hereinafter
"Carter").
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D. Claim 19 stands rejected under 35 U.S.C. U.S.C. §103(a)
as being unpatentable over Shibuya in view Udipi. 6 Id. at
6-7.
E. Claims 20 and 25 stand rejected under 35 U.S.C. U.S.C.
§ 103 (a) as being unpatentable over Shibuya m view
Lubowtiz.7 Id. at 7-8.
Appellants seek our review of Rejections A-E above.
OPINION
Rejection A-Anticipation (claims 14-16 and 27)
The Examiner rejects claims 14--16 and 27 as anticipated by Shibuya.
Final Act. 2. The Examiner finds that Shibuya teaches
a crosslinked thermoplastic particle (col. 52 lines 15-25) formed
by reacting a thermoplastic polymer having backbone functional
groups (col. 24 lines 45-56) and a polyfunctional crosslinking
agent that is reactive with the functional groups of the polymer
and has a reactivity of two or greater/itself, which has two end
functional groups (col. 44 lines 20-25). Shibuya et al. teaches the
particles can be added, as is, to other resins. Since the particles
of Shibuya et al. are made with the same components as the
instant particles, the ability of the particles to swell in an uncured
thermosetting resin is a latent property.
Id. Additionally, the Examiner finds that Shibuya teaches a polyetherimide
that has a "carboxylic acid functionality group on the ends." Id. at 2-3. The
Examiner also finds that the "molecule itself acts as its own crosslinking
agent." Id. at 3.
6 Udipi, US 5,051,469, issued September 24, 1991 (hereinafter "Udipi").
7 Lubowtiz et al., US 5,756,597, issued May 26, 1998 (hereinafter
"Lubowtiz").
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Appellants argue claims 14--16 separately, but make no argument with
respect to claim 27. Appeal Br. 4--6. Claim 27 therefore stands or falls with
the claim from which it depends, or claim 14.
Claim 14: Appellants argue, with respect to claim 14, that "[i]t is
clear from Shibuya's disclosure, however, that the end blocking agent (C) is
not used to react with the functional groups of a thermoplastic polymer to
make a crosslinked particle, instead, the end blocking agent (C) is used to
make a crosslinkable polymer; i.e., the polyimide with crosslinkable
groups." Id. at 4--5. And, according to Appellants, the "end blocking agent
having a crosslinkable group" of Shibuya is not the "polyfunctional
crosslinking agent" recited in claim 14. Id. at 5. Appellant also argues that
because the thermoplastic particles are not the same-i.e., they are not made
from the same components-they are not "capable of swelling in the
thermosetting resin" according to the claims. Id.
The Examiner further explains that
the "thermoplastic polymer having backbone or end functional
groups" claimed is the polyetherimide polymer of Shibuya,
whereas the end blocking agent described in the reference is a
reactant used to form the polyetherimide polymer. The
polyetherimide self-crosslinks through its functional groups.
Therefore, the polyetherimide of Shibuya is both the (a)
thermoplastic polymer having backbone or end functional groups
claimed and (b) a polyfunctional crosslinking agent that is
reactive with the functional groups of the thermoplastic polymer
and has a reactivity of two or greater.
Ans. 2. Appellants, in rebuttal, argue that the thermoplastic polymer having
end functional groups and the polyfunctional crosslinking agent cannot be
the same compound. Reply Br. 2. According to Appellant, the Specification
describes them as separate compounds to further the ability to tailor the
properties of the composite. Id. at 3. Specifically, Appellant argues that by
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controlling the crosslink density by changing the crosslinker concentration,
the swell factor of the particles can be modified. Id. And, "[ c ]hanging the
crosslinker concentration relative to the concentration of the thermoplastic
polymer to control the crosslink density is only possible when these
compounds are different entities." Id.
We agree with the Examiner for the reasons expressed in the Final
Action and Answer. Moreover, we note that Appellants' argument
regarding the requirement that thermoplastic polymer having end functional
groups and the polyfunctional crosslinking agent must be separate and
different compounds to control crosslink density is unconvincing as they are
based on unclaimed limitations. The claims are silent regarding crosslink
density as well as swell factor. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) ("[A]ppellant's arguments fail from the outset because ... they are
not based on limitations appearing in the claims."). The claims require only
that the thermoplastic particle is capable of swelling in the thermosetting
resin. And as the Examiner correctly found, "[ s ]ince the particles of
Shibuya et al. are made with the same components as the instant particles,
the ability of the particles to swell in an uncured thermosetting resin is a
latent property." Final Act. 2. Moreover, Appellants explain in the
Specification that
Although one may be able to predict in some circumstances
whether or not thermoplastic particles are compatible with the
resin, one way to test whether thermoplastic particles are
thermodynamically compatible with resin is to combine particles
with a resin to determine whether the resin swells the particles
without dissolving them and to prepare a cured material to
determine whether the particles maintain themselves as discrete
particles after curing. Examples of thermoplastic particles that
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are thermodynamically compatible with epoxy resin include
polyetherimide, polysulfone, polyethersulfone.
Spec., p. 14, 11. 19-27 (emphasis added). Notably, the Specification
describes polyetherimides and polyethersulfones as thermodynamically
compatible, and therefore swellable---each thermoplastic particle is taught
by Shibuya. Shibuya, col. 53, 11. 53-54. Accordingly, we find no reversible
error in the Examiner's rejection of claim 14 as anticipated by Shibuya. See,
e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]hen the PTO
shows sound basis for believing that [the functionally defined properties] of
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.")
Claim 15: Claim 15 requires that the thermoplastic polymer be
selected from "poly ether sulfone (PES), poly ether ether sulfone (PEES),
poly etherimide (PEI), poly phenylene oxide (PPO), and a copolymer
thereof." Claims Appendix at Appeal Br. 12. The Examiner finds that
Shibuya teaches a polyetherimide, or PEI. Final Act. 2.
Appellants argue that "[t]he chemical structure being referred
represents the cross linkable-group-containing polyimide of Shibuya's
invention, but this structure is not reacted with a polyfunctional
crosslinking agent to form a swellable, crosslinked particle." Appeal Br. 6.
For the reasons discussed above for claim 14, we find no reversible
error in the Examiner's findings.
Claim 16: Claim 16 additionally requires that the polyfunctional
crosslinking agent be selected from "alkylated melamine derivatives, acid
chlorides, multi-functional epoxies, carboxylic acids, and alkylated
glycoluril resins." Claims Appendix at Appeal Br. 12. The Examiner finds
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that Shibuya teaches a polyetherimide having carboxylic acid functional
groups which "acts as its own crosslinking agent." Final Act. 3.
Appellants argue that the Examiner applies a different construction for
claim 14 and claim 16. Id. at 6. Appellants also argue that Shibuya does not
teach the crosslinking agents recited by the claims. Specifically, Appellants
argue that Shibuya discloses dicarboxylic acid anhydride which is not
equivalent to carboxylic acid. Reply Br. 5.
We agree with the Examiner. As the Examiner correctly finds, the
polyetherimide of Shibuya acts as both the thermoplastic polymer with end
functional groups and the polyfunctional crosslinking agent. Ans. 2 and 4.
There is no inconsistency in the Examiner's treatment of claims 14 and 16.
The Examiner also correctly finds that the "polyetherimide [of Shibuya] has
a carboxylic acid functionality on the ends (col. 5 lines 46-52)." Final Act.
3. And, while Shibuya may prefer a carboxylic acid anhydride (col. 44, 11.
20-26), Shibuya teaches that "a dicarboxylic acid or its anhydride" can be
used as the end-blocking agent, which the Examiner finds is used to make
the polyetherimide-that has both end functional groups and a crosslinking
agent. Shibuya col. 43, 11. 43--48.
Rejection B - Obviousness (claims 1, 2, 7, 11-13, and 26)
The Examiner rejects claims 1, 2, 7, 11-13, and 26 as unpatentable
under 35 U.S.C. §103 over Shibuya and Boyd. Final Act. 4. In addition to
the findings above for claim 14 which also are relevant for claim 1, the
Examiner finds that "[ s ]ince the particles of Shibuya et al. are made with the
same components as the instant particles, the ability of the particles to swell
in an uncured thermosetting resin forming a gradient interface with the
thermosetting resin when the resin system exceeds a specific onset
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temperature is a latent property." Id. at 4. The Examiner acknowledges that
Shibuya "does not teach an uncured thermosetting resin" but finds that Boyd
teaches "engineered thermoplastic particles and a thermosetting resin (col. 1
lines 10-19). Id. According to the Examiner, Shibuya and Boyd both relate
to thermoplastic particles and one skilled in the art would be motivated to
make the recited combination "to achieve high compression after impact
strengths in the composition, as evidenced by Boyd." Id. 4--5.
In response to Rejection B, Appellants argue claim 1 alone. Appeal
Br. 7. Appellants do not present separate argument with respect to 2, 7, 11-
13, and 26 and therefore, these claims stand or fall with claim 1. Id.
Appellants argue that Boyd, while teaching "the incorporation of swellable
or soluble thermoplastic particles (preferably, polyimides) into a
bismaleimide resin, wherein the particles swell or dissolve during cure
(Boyd: col. 7, 11. 9-10)," does not teach crosslinked particles. Id. Therefore,
says Appellants, "the combined teachings would not have resulted in the
claimed resin system with swellable, crosslinked thermoplastic particles."
Id.
For the reasons expressed by the Examiner, Appellants do not
convince us of reversible error. The test for obviousness is not whether the
claimed invention is expressly suggested in any one or all of the references,
but whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Boyd
expressly teaches adding thermoplastic polyimides to an uncured
bismaleimide resin. Boyd, col. 4, 11. 12-17. And, while Boyd may not use
crosslinked thermoplastics in practicing its invention (as Appellants
suggest), Boyd discusses the use of crosslinked structures which are known
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to be brittle. Id. at col. 1, 11. 35-39. As a result, those skilled in the art
recognize the importance of increasing the toughness in crosslinked polymer
systems. Id. Boyd explains that the "subject invention pertains to
bismaleimide resin systems contain both a particulate thermoplastic
toughener and a minor quantity of a low viscosity epoxy resin." Id. at col. 1,
13-16 (emphasis added). Therefore, we agree with the Examiner that the
skilled artisan would have reason to combine the references-in particular,
incorporating the uncured resin of Boyd into the crosslinked thermoplastic
system of Brooks-to achieve a resin system that possesses improved
compression strengths. Boyd col. 1, 11. 12-19 and col. 3, 11. 65-68.
Rejection C - Obviousness (claim 18)
Claim 18 is rejected by the Examiner as obvious over Shibuya and
Carter. Final Act. 6. Claim 18 additionally requires that "the thermoplastic
polymer is amine-ended PES/PEES copolymer." Claims Appendix at
Appeal Br. 12. The Examiner finds that Shibuya teaches the claimed
thermoplastic, as discussed above, but fails to teach that the thermoplastic is
an amine-ended PES/PEES copolymer as required by claim 18. Final Act. 6.
But, the Examiner finds that Carter "teaches a similar particle having an
amine ended PES/PEES copolymer (para. 191 ). " Id. The Examiner also
finds that Shibuya and Carter both relate to thermoplastic polymers and a
person having ordinary skill in the art would have been motivated to
combine these references "to have a flexible polymer element that can be
stored at ambient or elevated temperature for extended periods, as evidenced
by Carter et al. (para. 192)." Id.
Appellants argue that the portion of Carter cited by the Examiner "has
nothing to do with forming crosslinked thermoplastic particles" and that
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"[a]mine-ended PES/PES is chemically different from the crosslinkable-
group-containing polyimide of Shibuya." Appeal Br. 7-8. Appellants also
contend that "having a flexible polymer that is soluble in a curable
composition is not relevant to the solution being provided by Shibuya." Id.
at 8. Therefore, Appellants argue the "Examiner fails to provide evidence
showing that amine-ended PES/PEES polymer is similar to the
crosslinkable-group-containing polyimides disclosed by Shibuya such that
crosslinked particles could be formed using Shibuya's method." Reply Br.
5.
For the reasons expressed by the Examiner, we agree with the
Examiner. Moreover, we note that Carter teaches that thermoplastics
include polyetherimides and polyethersulphones. Carter i-f 50. The
thermoplastics are preferably polyaromatic, have substituents that provide
cross-linking activity, and comprise a polyaromatic sulphone with ether-
linked repeating units. Id. at i-fi-154--56. In addition, the "polyaromatic
preferably contain pendant or chain terminating groups" which preferably
include amine and hydroxyl end groups. Id. at i-fi-f 67.
Rejection D-Obviousness (claim 19)
Claim 19 is rejected by the Examiner as unpatentable under 35 U.S.C.
§ 103 over Shibuya and U di pi. Final Act. 6-7. Claim 19 requires that the
"crosslinked thermoplastic particle contains two or more layers." Claims
Appendix at Appeal Br. 12. According to the Examiner, Udipi teaches
thermoplastic particles "having a core-shell/two layer structure (abstract)"
and that one skilled in the art would have been motivated to make the recited
combination "to prevent sintering at high temperatures as well as preserve
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the particulate form, as evidenced by Udipi (col. 3 lines 4--15)." Final Act.
7.
Appellants argue that the core-shell particles of Udipi are "structurally
and chemically different from the crosslinked polyimide particles disclosed
by Shibuya." Appeal Br. 8. Thus, Appellants contend that "it is not
understood how one skilled in the art could modify crosslinked polyimide
particles of Shibuya to convert them into core-shell particles based on
Udipi's teachings." Id.
We find no reversible error in the Examiner's findings and reasoning.
The Examiner finds that based on U di pi' s core-shell structure the skilled
artisan would have reason to modify the Shibuya crosslinked thermoplastic
polymer into two or more layers. Appellants do not dispute the Examiner's
finding that the Udipi core-shell structure teaches a layered structure. Final
Act. 7. We therefore accept this finding as fact. Appellants' argument that
the Examiner's combination lacks rational underpinnings is unpersuasive.
In addition to the reasons stated by the Examiner, Udipi recognizes that
thermoplastics often crack and become brittle. Udipi, col. 1, 11. 17-23.
Udipi teaches that the "core-shell morphology" results in "toughened
polymers with superior flexural modulus." Id. at col. 1, 11. 53-59. This is
consistent with one of the stated purposes of Shibuya-i.e., improved
mechanical properties including flexural modulus. Shibuya col. 1, 11. 12-26
and col. 5, 11. 9-14. 8
8 We also note that this is consistent with the teachings of Boyd that
recognizes toughening of the thermoplastic is desirable. Boyd col. 1, 11. 12-
19 and col. 3, 11. 65---68.
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Rejection E - Obviousness (claims 20 and 25)
The Examiner rejects claims 20 and 25 as unpatentable under 35
U.S.C. § 103 over Shibuya and Lubowtiz. Claims 20 and 25 additionally
require that "the molecular weight the thermoplastic polymer is about 3,000-
50,000 g/mol." and "a fiber preform comprising fibers without matrix resin,"
respectively. Claims Appendix at Appeal Br. 12. According to the
Examiner, Lubowtiz teaches crosslinked thermoplastics where the molecular
weight of the thermoplastics is in the claimed range. Final Act. 7. The
Examiner explains that one skilled in the art would have been motivated to
combine the references to achieve thermoplastics that are easy to process to
form composites that are tough, have impact resistance, possess superior
thermomechanical properties and have superior thermo-oxidative stability,
as evidenced by Lubowtiz et al. (col. 8 lines 20-35)." Id.
Appellants argue that Lubowtiz "fails to cure the deficiencies of
Shibuya with regard to the subject matter of claim 14, on which claim 20
depends." Appeal Br. 8. For the same reasons discussed above with respect
to claim 14, Appellants argument fails.
With respect to claim 25, the Examiner finds that Lubowtiz "teaches a
preform having fiber/layers of fabric and the thermoplast dispersed/flowed
into the fibers (col. 10, lines 21-27)." Final Act. 8. Appellants argue that
the portions of Lubowtiz relied upon by the Examiner do not teach a preform
but rather describe the preparation of prepregs. Appeal Br. 9. And, Shibuya
teaches molding the polyimide by sinter molding or melt/molding (Appeal
Br. 9) and "a device for shaping thermoplastic material" (Reply Br. 6). As a
result, Appellants argue that "[i]t is not understood how Shibuya and
Lubowtiz could be combined to arrive at a fiber preform with crosslinked
thermoplastic particles dispersed therein." Id.
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For the reasons stated by the Examiner, we again find no reversible
error. Appellants broadly define preform as "an assembly of fibers, such as
unidirectional fibers and woven fabrics, that are ready for receiving a resin."
Spec., p. 11, 11. 24--28. Similarly, Appellants claims state that the "fiber
preform compris[es] fibers without matrix resin." See Claims Appendix at
Appeal Br. 12. Lubowtiz describes methods of preparing prepregs using a
layer "fabric or other reinforcement" that is combined with a mixture of
oligomers and solvents or interleaved layers of resin film (which comprises
an oligomer and solvent). Lubowtiz, col. 10, 11. 15-27. It is the layer of
fabric without the oligomer and solvent (i.e., the resin) that comprises the
preform. And, as the Examiner finds, a person skilled in the art would have
reason to add or disperse the engineered crosslinked thermoplastic particles
of Shibuya (col. 51, 11. 14--20) as is (without a resin) to the fiber preform of
Lubowtiz, in order to improve mechanical properties among others.
Lubowtiz, col. 1, 11. 60-61 ("improved toughness and thermomechanical
stability) and col. 8, 11. 28-29 ("composites that are tough, have impact
resistance, possess superior thermomechanical properties," etc.); Shibuya,
col. 1, 11. 12-26 ("excellent mechanical properties"), col. 4, 1. 65 (improved
"mechanical properties at high temperatures"), and col. 5, 11. 9-14
(mechanical properties such as "compression test ... flexural modulus, Izod
impact value, and the like.").
CONCLUSION
The Examiner did not reversibly err in rejecting claims 14--16 and 27
under 35 U.S.C. §102(b) as being anticipated by Shibuya.
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The Examiner did not reversibly err in rejecting claims 1, 2, 7, 11-13,
and 26 under 35 U.S.C. §103(a) as being unpatentable over Shibuya in view
of Boyd.
The Examiner did not reversibly err in rejecting claim 18 under 35
U.S.C. §103(a) as being unpatentable over Shibuya in view Carter.
The Examiner did not reversibly err in rejecting claim 19 under 35
U.S.C. § 103(a) as being unpatentable over Shibuya in view Udipi.
The Examiner did not reversibly err in rejecting claims 20 and 25
under 35 U.S.C. §103(a) as being unpatentable over Shibuya in view
Lubowtiz.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 7, 11-
16, 18-23 and 25-27 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
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