Ex Parte Choate et al

Patent Trial and Appeal Board

Oct 21, 2016

13555777 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/555,777 07/23/2012 Martin Choate
20306 7590 10/21/2016
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
Ol-1046-D-CON3 4403
EXAMINER
SELLERS, ROBERT E
ART UNIT PAPER NUMBER
1765
MAILDATE DELIVERY MODE
10/21/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MARTIN CHOATE, JYOTI SHARMA, STEVE PETERS, and
KEVIN RAFFERTY1
Appeal2015-005620
Application 13/555,777
Technology Center 1700
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-16. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Isola USA Corp. is identified as the real party in interest. Br. 1.
Appeal2015-005620
Application 13/555,777
Appellants claim a prepreg comprising a substrate impregnated with
an epoxy resin, a styrene-maleic anhydride copolymer, and from about 15 to
about 50 weight percent bismaleimide resin, cyanate ester resin, and/or
bismaleimide triazine (independent claim 1; see also remaining independent
claims 10 and 12).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A prepreg comprising a substrate impregnated with a
thermosetting resin including:
at least one epoxy resin;
at least one ingredient selected from the group
consisting of from about 15 to about 50 wt%
bismaleimide resin, cyanate ester resin, bismaleimide
triazine or combinations thereof; and
at least one styrene-maleic anhydride copolymer.
The Examiner rejects claims 1-9 and 11-16 on the ground of
nonstatutory double patenting as being unpatentable over claims 1-8 of US
Patent No. 7,713,621 or US Patent No. 8,227,084 (Final Action 2).
We summarily sustain this double patenting rejection because it has
not been contested in the appeal record as correctly noted by the Examiner
(Ans. 7).
The Examiner rejects claims 1-16 under 35 U.S.C. § 103 as
unpatentable over the PCT publication (WO 98/188845, published May 7,
1998) in view of Eldin (US 5,789,482, issued Aug. 4, 1998) as well as
Japanese '163 (JP 05-222163, published Aug. 31, 1993), Japanese '830 (JP
2
Appeal2015-005620
Application 13/555,777
06--001830, published Nov. 1, 1994), Japanese '123 (JP 62-275123,
published Nov. 30, 1987) and Kubens (US 3,562,214, issued Feb. 9, 1971)
(Final Action 3).2
We sustain the§ 103 rejection for the reasons thoroughly detailed by
the Examiner in the 7 March 2003 Non-final Action ( 6-7), the Final Action
(3--4), and the Answer (3-8). The following comments are added for
emphasis.
The Examiner finds that the PCT publication discloses all constituents
of the claim 1 prepreg including the bismaleimide, cyanate ester, and
bismaleimide triazine ingredients but not the claimed amounts of these
ingredients (see, e.g., Ans. 3). Regarding this deficiency, the Examiner finds
that each of Japanese' 163, Japanese '830, Japanese '123, and Kubens
discloses an impregnating resin composition comprising such an ingredient
in amounts within the claimed range and having desirable properties such as
improved heat resistance (id. at 4--5). The Examiner concludes that it would
have been obvious to employ the bismaleimide, cyanate ester, and/or
bismaleimide triazine ingredients of the PCT publication in the amounts
taught by the Japanese' 163, Japanese '830, Japanese '123, and Kubens
references in order to obtain the desirable properties disclosed in these
references (id. at 5---6).
2 Appellants do not present separate arguments specifically directed to the
dependent claims (Br. 7-8). As a consequence, the dependent claims will
stand or fall with their parent independent claims of which claim 1 is
representative.
3
Appeal2015-005620
Application 13/555,777
Appellants present the argument below.
The reasons articulated by the examiner for combining
the references are irrational because one of skill in the art at the
time of the invention would not understand that the individual
ingredients in the amounts recited by the examiner would
impact the resin product or laminate product in the manner
stated - i.e. by improving heat resistance etc. . . Instead, the
person of skill in the art at the time of the invention upon
reading the prior art references would understand that the
combination of ingredients in the prior art formulations resulted
in the stated improvements.
Br. 7-8.
Appellants' argument lacks persuasive merit as fully explained by the
Examiner (Ans. 7-8). One with ordinary skill in this art would reasonably
expect that the ingredient amounts contribute to the desirable properties
disclosed by the above references. Appellants fail to explain with any
appreciable specificity why such an expectation is not reasonable.
The decision of the Examiner is affirmed.
TIME PERIOD
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
4