Ex Parte Dry

Patent Trial and Appeal Board

Aug 12, 2016

12817909 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/817,909 06/17/2010 Carolyn Dry
23524 7590 08/16/2016
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
103226-0107 6573
EXAMINER
ADKINS, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CAROLYNDRY 1
Appeal2015-000962
Application 12/817,909
Technology Center 1700
Before TERRY J. OWENS, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON i\.PPEi\L
Appellant appeals under 35 U.S.C. § 134(a) from a rejection2 of
claims 65---67, 69--75, 77-93, 95-98, 100-105, and 114--129. We have
jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 The Real Party in Interest is identified as Carolyn Dry. (Appeal Brief, filed
21July2014 ("App. Br."), 2.)
2 Final Office Action mailed 20 February 2014 ("Final Rejection"; cited as
"FR.").
Appeal2015-000962
Application 12/817 ,909
OPINION
A. Introduction 3
The subject matter on appeal relates to a "self-repairing" composite
that includes a "matrix and inclusions, such as reinforcement fibers or
particles." (Spec. 1, 11. 11, 15-16.) The composite is said to have multiple
applications in construction, automobile, and various other industries. (See
id. at 4, 11. 29-31.) The claims are directed to a composite matrix having
"repair conduits" (which may be "hollow repair fibers") and "modifying
agents." (Id. at 6, 11. 13-14, 28-29.) "Upon a predetermined stimulus, the
modifying agent is released from the repair conduits into the matrix
material." (Id. at 7, 11. 18-19.) "The matrix and the repair conduits together
form an in situ fluidic system that transports the modifying agent( s)
throughout the matrix." (Id. at 7, 11. 20-21.) Claims 65 and 95 are the only
independent claims.
Representative claim 65 reads:
65. A multifunctional composite compnsmg:
a polymeric matrix;
glass conduits disposed in the polymeric matrix, wherein the
glass conduits comprise an exterior metal coating disposed on the
conduits; and
a flowable repair chemical disposed in the conduits;
the composite being conductive and self-repairing when damaged.
(App. Br. 13 (emphases added).)
The Examiner maintains the following grounds of rejection: 4
3 Application 12/817,909, Multiple Function, Self-Repairing Composites
with Special Adhesives, filed 17 June 2010. We refer to the
'"909 Specification," which we cite as "Spec."
4 Examiner's Answer mailed 13 August 2014 ("Ans."). A section 112,
second paragraph rejection of claim 120 has been withdrawn. (Ans. 18.)
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Application 12/817 ,909
A. Claims 65-67, 69-73, 75, 80-82, 84, 85, 91, 92, 95-97, 100,
101, 104, 105, 116, 119-122, and 124--129 stand rejected under
35 U.S.C § 103(a) as being unpatentable over Dry. 5
Al. Claims 74, 77, 78, 98, and 115 stand rejected under 35 U.S.C
§ 103 (a) as being unpatentable over Dry and Therriault. 6
A2. Claim 79 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Dry, Therriault, and Saville. 7
A3. Claims 83, 117, and 118 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Dry and Mather. 8
A4. Claims 86-88, 102, and 103 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Dry and Misiak. 9
A5. Claim 89 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Dry and Evans. 10
A6. Claim 90 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Dry, Evans, and Saville.
A7. Claim 93 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Dry and Saville.
5 Carolyn M. Dry, Self-Repairing, Reinforced Matrix Materials, U.S. Patent
Application Publication No. 2001/0050032 (published 13 December 2001).
6 Daniel Therriault, et al, Microcapillary Networks, U.S. Patent Application
Publication No. 2004/0226620 Al (published 18 November 2004).
7 Paul Saville, Review of Radar Absorbing Materials, Technical
Memorandum (January 2005).
8 Patrick T. Mather, et al, Shape Memory Polymers Based On Semicrystaline
Thermoplastic Polyurethanes Bearing Nanostructured Hard Segments, U.S.
Patent Application Publication No. 2004/0116641 Al (published 17 June
2004).
9 Hanns-Roland Misiak & Dagmar Behn, Stabilized Cyanoacrylate
Adhesives, U.S. Patent No. 6,642,337 (issued 4 November 2003).
10 R.L. Evans, Process of Forming Metal Coating on Filled Microcapsules,
U.S. Patent No. 3,503,783 (issued 31 March 1970).
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Application 12/817 ,909
A8. Claim 114 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Dry and Johnson. 11
A9. Claim 123 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Dry and Rousseau. 12
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Claim 65 13
The prior art reference Dry discloses a self-repairing matrix composite
material that includes "various fiber reinforcements." (Dry i-f 7.) The self-
repairing composite may self-repair damages such as "matrix microcracking
and/or debonding at the fiber/matrix interface." (Id. i-f 9.) The Dry
reference discloses "a curable matrix composition," "a plurality of hollow
fibers therein," and "a selectively releasable modifying agent" whereas
"[ t ]he fibers are structured so that the modifying agents stay within the
interior spaces or cavities of the fibers within the matrix until the matrix is
cured or set." (Dry i-fi-119, 20 (cited in FR. 5).) "After curing, the modifying
agents are selectively released from the fibers by application or action of at
least one predetermined external stimulus." (Dry i-f 20.) "The modifying
agents include agents which will modify the performance characteristics of
the cured shaped article matrix materials in use." (Dry i-f 65 (cited in FR. 7).)
11 David W. Johnson et al, Method of Inserting Z-Axis Reinforcing Fibers
Into A Composite Laminate, U.S. Patent Application Publication No.
2005/000603 Al (published 13 January 2005).
12 Wm. Richard Rousseau, Armor Panel, U.S. Patent No. 5,789,327 (issued
4 August 1998).
13 Claims 66----67, 69--73, 75, 80-82, 84, 85, 91, 92, 96-97, 100, 101, 104,
105, 116, 119--122, and 124--129 stand or fall with claim 65. (See App. Br.
6)
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Application 12/817 ,909
Appellant first argues that the Examiner erred in concluding that the
prior art reference Dry teaches or suggests "a conductive composite"
because claim 65 requires a polymeric matrix which is different from the
graphite and metal matrix disclosed in Dry. (App. Br. 6.)
The prior art reference Dry is not limited to graphite or metal matrix
but instead discloses that "the matrix materials in accordance with this
invention are processable to form shaped articles by molding, casting,
sintering, laminating, machining, extruding, or other material fabrication
method useful with the matrix material selected." (Dry i-f 62.) The
Examiner finds that a particular prior art example may include a "polymer
matrix" that includes "hollow fibers having interior spaces therein for
containing selectively releasable modifying agents." (Dry i-fi-1 63, 93 (cited in
FR. 5, 6).)
The Examiner also finds that the prior art teaches a composite that
includes "conductive" fibers and "polymer matrix materials [that] comprise
a continuous polymer phase with a fiber reinforcement therein." (Ans. 19
(citing claim 6 of Dry); Dry i-f 6.) The prior art teaches that an "overall
composite" may exhibit "both fiber and matrix dominated properties." (Dry
i-f 10.) The prior art also teaches that the modifying agents are included in
the matrix to "modify the performance characteristics of the cured shaped
article matrix materials in use." (Dry i-f 65 (cited in FR. 7).)
The prior art reference Dry further discloses that a composite may
include "a solid matrix material containing rigid-filled fibers or liquid-filled
fibers" which "may vary in response to seismic waves." (Dry i-f 128.) As a
result, "the overall matrix composite may be better able to withstand energy
vibration." (Id.) By including in the composite "[ r ]heological fluids and
electrorheological fluids" which are "stiff in one condition, and thereafter
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Application 12/817 ,909
upon application of electrical current, may become fluid or liquid," "a sensor
switch" may be used "to liquefy or fluidize building structures." (Id.) The
prior art therefore teaches that "the overall matrix composite" may be
conductive upon which electrical current may be applied to change the state
of the fluids included within the composite.
Given that the prior art teaches a polymeric matrix, that a composite
having the matrix may exhibit characteristics including responsiveness to
electrical energy, that the composite may include conductive fibers, and that
the composite may exhibit fiber dominate properties, we find that a skilled
artisan would have found the claim limitation of "the composite being
conductive" obvious.
Appellant's argument that the prior art fails to teach "a combination of
a polymeric and metal matrix" is not persuasive because it is directed toward
a limitation which is not in the claims. See In re Self, 671F.2d1344, 1348
(CCP A 1982) ("[A ]ppellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims."). Claim 65 does
not recite a composite having both a polymeric and metal matrix - all that
claim 65 requires is that the "composite comprising a polymeric matrix" be
conductive.
Appellant's argument that Dry does not teach that "the conductive
fibers should be used at such as concentration to ensure that the composite
itself is conductive" (App. Br. 6; see also Reply 7) is not well taken because
it is again directed toward a limitation which is not in the claims. See Self,
671 F.2d at 1348.
Appellant next argues that the Examiner erred in finding that the prior
art reference Dry teaches or suggests the claim limitation of a "glass
conduit" having "an exterior metal coating disposed on the conduits." (App.
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Br. 7.) Appellant does not dispute that the prior art discloses a "glass
conduit" but argues that the prior art glass fiber lacks the "metal coating"
recited in claim 65. (Id.)
The '909 Specification discloses that "the fibers may have a coating ..
. to modify[] the fiber properties" such as a metal coating used "to allow an
electrical current to flow along the fiber." (See Reply 5 (citing Spec. at 19,
11. 1-9)). 14 The prior art Dry similarly discloses certain "coatings" which
may respond to "stimuli" such as "[ e ]lectrical currents, voltages ... to
permit or cause selective release of the modifying agent or agents from the
fibers." (See App. Br. 7; Reply 5---6; see also FR. 5 (citing Dry i-f 75).) The
prior art reference also discloses that "methods to promote repair chemical
release may include electrical, magnetic, and chemical means which alter the
... coating integrity of the fibers." (Dry i-f 94.)
In addition, the Examiner finds that the hollow fibers in the prior art
may include "specialty coatings" used to "selectively degrade upon the
occurrence of a particular external stimulus" so that the modifying agents
contained within the hollow fibers may be released. (Dry i-f 7 4 (cited in FR.
5).) For example, "in response to [an] external stimulus" such as
"[ e ]lectrical currents, voltages," the coating may be removed "which give[ s]
way to permit leakage of the modifying agent." (Dry i-f 7 5 (cited in FR. 5).)
Based on the undisputed finding that the prior art discloses a glass
conduit and further based on the prior art disclosure that the hollow fibers
14 We additionally note that Appellant cites the '909 Specification at "p. 17,
1. 3--4" as support for the claim element of"[ t ]he glass conduits comprise an
exterior metal coating disposed on the conduits." (App. Br. 4.) The '909
Specification at 17, 1. 3--4 discloses: "Examples of thermoplastics that can
incorporate the self-healing system include olefinics ... "which are
disclosed in Dry i-f 61.
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Application 12/817 ,909
may include coatings so that "electrical ... means" may "alter the coating
integrity" of the hollow fibers, we find that the Examiner did not commit
reversible error in finding that a skilled artisan would have found the
limitation of a "glass conduit" having "an exterior metal coating disposed on
the conduits" obvious.
With regard to independent claim 95, Appellant argues that the
reference does not teach or suggest "polymeric conduits" as recited. 15
Appellant does not dispute the Examiner's finding that the prior art reference
discloses polymeric conduits but repeats her argument that the reference
does not teach "a metal-coated polymeric conduit." (App. Br. 8.) For
reasons provided with regard to the metal coatings of claim 65 supra, we
uphold the Examiner's obviousness determination.
Claim 78
Claim 78 depends from claim 65 and recites "wherein the repair
chemical comprises conductive particles." The Examiner cites Therriault in
addition to the prior art Dry reference in support of the rejection.
Therriault discloses a self-healing host material having a three-
dimensional microcapillary system and that metal particles may be "useful
for modifying the host material." (Therriault i-fi-1 49, 65.) The host material
in Therriault "may be applied as ... liquids" or "slurries" which may be
modified by metal particles. (Id. i-fi-160, 61, 65.) The addition of metal
particles may change certain properties of the host material including its
"viscosity" when the host material is in liquid form. (Id. i164.) Finding that
15 Claim 95 recites: "A multifunctional composite comprising: a polymeric
matrix; a plurality of polymeric conduits disposed in the polymeric matrix,
each conduit comprising a metal coating on the conduit; and a flowable
repair chemical disposed in the polymeric conduits; wherein the composite
is able to repair damage to itself." (App. Br. 15-16.)
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Application 12/817 ,909
Therriault teaches using metal particles (conductive particles) to modify
properties of a liquid component used for a self-repairing material and that
Dry teaches a self-repairing material having repair chemicals with
predetermined properties, the Examiner finds that the differences between
the claimed invention and the prior art are such that the claimed invention
would have been obvious. (Ans. 22.)
Appellant does not argue against the Examiner's finding that "[t]he
focus of Therriault as a whole is on making microfluidics devices that may
be used for self-healing." (Reply 8; see Ans. 22.) Appellant instead argues
that "the fact that Therriault fails to teach the use of conductive particles for
any material that is to flow through the microcapillaries indicates that their
use therein is at least inappropriate or unnecessary" and therefore teaches
away from the inclusion of the metal particles. (App. Br. 10.) We are not
persuaded by Appellant's argument because it does not explain why such
silence on the particles flowing through the microcapillaries would teach
away from the inclusion of the metal particle to modify the properties of a
material encompassing the metal particle. See Syntex (US.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (holding that "a reference
will teach away when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the applicant's
invention."). Because Appellant also does not explain why such silence
indicates that a skilled artisan would find the inclusion of the metal particle
"inappropriate or unnecessary" as asserted by Appellant (App. Br. 10), we
are not persuaded that the Examiner erred in this aspect of the obviousness
analysis.
We are also not persuaded by Appellant's argument that there lacks
motivation to combine Dry with Therriault. (See Reply 7-8.) The prior art
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reference Dry provides multiple examples of using chemicals that have a
variety of properties such as "anticorrosive chemical," "adhesive repair
chemical," chemicals as "water barriers," and chemicals which "survive the
long periods of time and which survive repeated temperature variations" to
"modify the performance characteristics of the cured shaped article matrix
materials in use." (Dry i-fi-165, 68, 98, 119, 130). A skilled artisan would
therefore have understood that based on the inclusion of a repair chemical in
a composite, properties of the repair chemical may affect certain
corresponding properties of the composite. For example, Dry discloses the
inclusion of a repair chemical having "antifreeze" property in a composite so
that the durability of the composite may be increased against "freeze/thaw
damage." (Id. i126.)
Based on Dry' s teaching that a repair chemical with the appropriate
properties may result in "improved properties" of the composite
encompassing the repair chemical (see Dry i1 7 6), we find that a skilled
artisan would have had the apparent reason to apply to Dry's composite the
teaching of Therriault that the inclusion of a metal particle in a liquid self-
repair component may affect certain properties of the encompassing liquid
component. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Claim 79
Claim 79 is a dependent claim of claim 65 (and claim 78) and recites
"wherein the composite is radar absorbing." Appellant does not dispute that
Saville teaches certain metals as absorbing materials but argues that the
Examiner erred because Dry fails to teach or suggest "the metal-coated
conduits of the present claims." (Reply 8.) For reasons provided with
respect to the limitation of "an exterior metal coating" recited in claim 65,
we do not find Appellant's argument persuasive.
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Moreover, the prior art reference Dry teaches using "low frequency
wave excitations" and "radiation, or other energetic stimuli" "to permit or
cause selective release of the modifying agent ... from the fibers." (Dry i-f
75). Based on the teaching that a composite may respond to radiation (id.), a
skilled artisan would have found the "radar absorbing" composite recited in
claim 79 obvious.
We are also not persuaded by Appellant's argument that "Dry does
not teach the types of metal fibers that may be used, [and therefore] such a
composite does not necessarily lead to a radar-absorbing composite." (See
id.)
Claim 79 does not specifically recite any particular type of metal
fiber. Appellant's argument is unpersuasive as it is directed toward a
limitation which is not in the claims. See Self, 671 F.2d at 1348.
Claims 89 and 90
With regard to claims 89 and 90 both of which include the limitation
of "wherein the repair chemical comprises a dye that changes color when the
repair chemical reacts with the matrix," it is undisputed that the Dry
reference discloses using "interactive dyes" "to identify the presence of
structural stresses or weaknesses." (Dry i-f 90; see App. Br. 11-12, Reply 9-
10.) It is also undisputed that Evans teaches a "colored dye ... capable of
color forming reaction." (Evans, 6, 11. 25-26; see App. Br. 11-12, Reply 9-
10.)
Appellant, however, argues that Evans is not analogous art because it
relates to "image production" which is "far afield of the claimed self-
repairing and conductive polymer composites." (Reply 9.)
In In re Clay, the Federal Circuit held:
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Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
966 F.2d 656, 658-59 (Fed. Cir. 1992) (emphasis added). In this case,
Appellant does not dispute the Examiner's finding that Evans discloses
"impermeable microcapsules" which contain color changing dyes. (Reply 9
("Evans makes use of rupturable microcapsules containing dyes.").) We
find that the production of a microcapsule having an "external metal
coating" that may rupture upon a particular stimuli such as "ohmic heating"
(Evans, 2, 11. 30-31; 5, 11. 50-56) is "reasonably pertinent" to a conduit that
may rupture in response "to a predetermined stimulus" such as "very high
heating" disclosed in the '909 Specification. (See Spec. 27, 1. 28 -28, 1. 1.)
The fact that Evans additionally discloses "a light sensitive copysheet
prepared with the microcapusles" does not change the fact that Evans
discloses a microcapsule having "a liquid or solid fill particle inside a
hollow shell" which is prepared "by coating organic-shelled microcapsules
with metal." (Evans, 2, 11. 36-42.)
Appellant's unelaborated statement that Evans additionally discloses
"copysheets comprising an electrically conductive backing" which is "far
afield" of the claimed invention does not show that Evans' disclosure related
to the microcapusles is non-analogous art under either prong of the test
enunciated in Clay. We are not persuaded that Appellant has shown that
Evans is not "reasonably pertinent" to the particular problem at issue here.
See Clay, 996 F.3d at 579.
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We are also not persuaded by Appellant's argument that the Examiner
erred because "there is simply no basis in Evans or Dry to assert that the
microcapsules of Evans should be or can be successfully used as part of a
self-repairing composite to indicate areas of damage." (App. Br. 11-12; see
Reply 9.) "The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art."
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Whether
the differences between the claimed invention and the prior art are such that
the claimed invention as a whole would have been obvious is therefore not
based on whether Evans' microcapsules may be bodily incorporated in the
composite of Dry.
Remaining Claims
Appellant argues that the rejections of claims 74, 77-79, 83, 86-90,
93, 98, 102, 103, 114, 115, 117, 118, and 123 are in error because "[n]one of
the additional references cure [the] deficiency" of Dry. (App. Br. 9-10.)
Appellant specifically argues that for dependent claims of claim 65, "Dry
does not teach or suggest a conductive composite with a polymeric matrix
nor that such a composite includes glass conduits disposed in the polymer
matrix comprising a metal coating and in which is disposed a flowable repair
chemical" (App. Br. 10) which we have addressed in the rejection of claim
65 supra. Appellant argues that for dependent claims of claim 95, "Dry does
not teach or suggest a composite that includes a polymeric conduit
comprising a metal coating" (id.) which we have addressed in the rejection
of claim 95 supra.
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Appellant has not provided arguments separate from those for claim
65 or claim 95, and we are not persuaded for the reasons discussed with
respect to claims 65 and 95 from which the remaining claims depend. In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
C. Order
It is ORDERED that the rejections of claims 65-67, 69-75, 77-93,
95-98, 100-105, and 114--129 are 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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