Ex Parte Fischer et al

Patent Trial and Appeal Board

Jun 3, 2016

12595905 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/595,905 07/12/2010
23117 7590 06/07/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Rudolf Hartmut Fischer
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.
BHD-5875-9 7352
EXAMINER
THOMPSON, CAMIE S
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
06/07/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUDOLF HARTMUT FISCHER, STEVEN DIRK MOOKHOEK,
and SYBRAND VAN DER ZW AAG
Appeal2015-000385
Application 12/595,905
Technology Center 1700
Before BRADLEY R. GARRIS, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McManus, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-5, 12-14 and 18-21 of
Application 12/595,905 under 35 U.S.C. § 103(a) as obvious. Final Act.
(July 18, 2013). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 Stichting Dutch Polymer Institute is identified as the real party in interest.
Appeal Br. 2.
Appeal2015-000385
Application 12/595,905
BACKGROUND
The '905 Application describes a composite material comprising a
matrix and a polymeric filler where the polymeric filler has multiple cavities
containing a functional liquid. The functional liquid may serve as an
indicator of damage to the matrix or act as a self-healing agent such as a
cross-linker or hardener. Spec. 3, 5. The filler material is at least as brittle
as the matrix so that it will rupture and release the functional liquid upon
formation of a crack in the matrix. Spec. 5; Appeal Br. 5.
Claim 1 is representative of the Appellants' claims and is reproduced
below:
1. A composite material comprising a matrix material and a
filler material, wherein the filler material is a polymeric material
having an anisotropic shape and comprising multiple cavities,
wherein said cavities comprise a functional liquid, and wherein
said material has an aspect ratio L/D which is larger than 2, and
wherein the matrix material and the filler material have a fracture
toughness Kie matrix and Kie filler, respectively, such that
Kie matrix/Kie filler 2: 1, and wherein formation of a crack in the
composite material breaks the polymeric material located in a
vicinity of the crack to thereby release the functional liquid in the
cavities into the crack.
Appeal Br. 17 (Claims App.).
REJECTIONS
Claims 1-5, 12-14 and 18-21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Prevorsek2 and Friesen. 3 Final
Act. 3.
2 U.S. Patent No. 5,104,599, issued April 14, 1992.
3 U.S. Patent No. 4,515,906, issued May 7, 1985.
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Application 12/595,905
DISCUSSION
Appellants seek reversal of the rejection on several bases. They argue
that there would be no motivation for a person of ordinary skill in the art to
combine the teachings of the cited references and that the claimed invention
would not result therefrom.
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
To show that the rejected claims are obvious, the Examiner must
demonstrate that a skilled artisan would have had reason to combine the
teachings of the prior art references to achieve the claimed invention, and
that the skilled artisan would have had a reasonable expectation of success
from doing so. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186,
1193 (Fed. Cir. 2014).
In the Final Rejection, the Examiner reasoned that one of ordinary
skill in the art would be motivated to combine the cited references as
follows:
Freisen also discloses that the polymeric ion-exchange materials
exhibit resistance to abrasion and osmotic swelling. Prevorsek
discloses that the composite has many uses and that the
composition can be used in applications where impact resistance
is required. Therefore, it would have been obvious to one of
ordinary skill in the art to utilize the anisotropic microporous
supports of the Freisen reference in applications that require
impact resistance.
Final Act. 4.
In response, Appellants assert that the Examiner's statement "that the
microporous material of Friesen et al exhibits resistance to abrasion and
osmotic swelling is used completely out of context." Id. at 12. Appellants
further argue that, "[ o Jn the basis of this context of resistance to abrasion
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Application 12/595,905
and osmotic swelling, the ordinarily skilled person would not cho[ o ]se to
utilize the anisotropic supports of Friesen et al in applications that require
impact resistance such as the materials of Prevorsek." Id. Appellants also
assert that the combination of Friesen and Prevorsek would not yield the
composite of the present claims because it would lack "cavities in which a
functional liquid is at the ready in the event of crack formation." Id. at 15-
16 (emphasis in original).
Friesen concerns a two component ion-exchange media. Friesen, col.
2:25-29. The first component is a polymer support member with small
pores at the surface connected to larger interior spaces ("internal pores").
The second component is an ion-exchange media found within the interior
spaces of the support member. Specifically, Friesen teaches as follows:
ion-exchange media useful for highly efficient extraction of ions
from aqueous solutions, the media comprising polymeric
microporous supports with an anisotropic pore structure of small
pores at the surface and large pores in the interior, the large pores
being filled with polymeric ion-exchange or ion-complexing
materials, and the small pores being sufficiently small to retain
the ion-exchange materials, thereby preventing their loss from
the support.
Id., col. 1:66-2:6. The support member is formed independently of the ion-
exchange media so that the interior spaces are empty upon formation. The
ion-exchange materials are made by "first loading the anisotropic
microporous support with monomers or sufficiently low-molecular-weight
prepolymers to permit introduction through the small surface pores . . ..
Polymerization within the support is then carried out. Once the polymer is
formed in the support, it cannot escape through the small surface pores." Id.,
col. 3:57---66. The invention of Friesen is taught to be "used for the
extraction of metal ions from aqueous solutions." Id., col. 3:67---68. As an
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Appeal2015-000385
Application 12/595,905
example, Friesen teaches the extraction of uranium from an aqueous
solution. Id., col. 6:21-26.
The Specification of Friesen states as follows with regard to resistance
to abrasion and osmotic swelling:
Thus, the present invention allows ion-exchange materials which
are highly resistant to damage from heat, abrasion, or osmotic
swelling to be made by using anisotropic microporous support
materials made from tough thermoplastics ... while at the same
time utilizing the high selectivity and high ion extraction
capacity of polymeric ion-exchangers which otherwise lack the
structural characteristics necessary to be useful as ion-
exchangers.
Id., col. 2:36-45 (underscoring added).
The primary reference, Prevorsek, concerns the manufacture and use
of certain short polymer fibers. In a first aspect, it relates to "short fibers
with sufficient lengths, diameters, length distributions, diameter
distributions, aspect ratios and mechanical strength for use as fibrous
reinforcement for a wide variety of resin compositions." Prevorsek, col.
13:48-52. Further, Prevorsek teaches the use of such fibers in a polymer
composite: "[i]n the preferred embodiments of the invention, the short fibers
of this invention are used to form the composite of this invention which
comprises such short fibers dispersed in a continuous polymer phase where
the polymer is selected from the group consisting of thermoplastic and
thermoset polymers." Id., col. 16:13-18. Prevorsek indicates that such a
composite "can be used in applications where improved distortion
temperature, strength, stiffness and impact resistance is required. For
example, the composition of this invention is useful in the fabrication of
structural composites and the matrices for friction materials." Id., col. 18:
59---65 (underscoring added).
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Application 12/595,905
The Examiner notes Friesen's resistance to abrasion and osmotic
swelling and that the composition of Prevorsek can be used where impact
resistance is required and finds a motivation to combine the matrix of
Prevorsek with the support members of Friesen in applications that require
impact resistance. The teachings of Friesen regarding resistance to abrasion
and osmotic swelling, however, are presented in the context of comparison
to prior art ion-exchange media. There is no teaching as to such utility in
structural materials. Even were this not so, there is no clear teaching in the
record that resistance to abrasion and swelling convey impact resistance to a
composite. Accordingly, there is no sufficient reason identified in the record
to combine the teachings of the cited references.
Even if the teachings of Prevorsek and Friesen were to be combined,
the interior pores of Friesen would not satisfy the structural and functional
requirements of the claimed cavities.
The Specification describes the claimed functionality of the cavities as
follows:
The action of the composite material in case of damage is as
follows. Damage will cause the development of cracks in the
composite material, which may eventually lead to failure of the
composite material. The crack generated in the matrix as a result
of external or internal forces will reach the polymeric material
and break the polymeric material. The cavities of the polymeric
material located in the vicinity of the crack will open and release
the functional liquid present in said cavities. The functional
liquid will move into the crack and perform its function.
Spec. 3--4. The Specification further states that the polymeric material can
be prepared from a polymer precursor "thereby encapsulating the functional
liquid in cavities inside the polymer." Id. at 9. Similarly, it describes "[t]he
functional liquid enclosed in the cavities of the polymeric material .... " Id.
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Application 12/595,905
at 5. In view of the Specification's description of the cavities as
"encapsulating" the functional liquid such that it is "enclosed" therein as
well as the claimed functionality, it is apparent that the "cavities" of claim 1
are closed cells that encapsulate the functional liquid within the polymeric
filler.
The Examiner determined that "the micropores in Friesen can be
construed as cavities." Ans. 5. Friesen teaches a polymeric structure with
large interior pores as well as smaller surface pores. The smaller surface
pores permit the flow of monomers and low molecular-weight prepolymers
from the external environment into the interior pores. Friesen, col. 3:58-59.
Accordingly, consistent with Appellants' above argument, the Board
determines that the pores of Friesen are not enclosed and are not capable of
encapsulating a functional liquid. As a consequence, the pores of Friesen do
not meet the limitations of claim 1 that "said cavities comprise a functional
liquid" nor that formation of a crack "release the functional liquid in the
cavities into the crack" upon rupture of the composite.
In view of the foregoing, the Board concludes that there has not been
a showing that a skilled artisan would have had adequate reason to combine
the teachings of Prevorsek and Friesen to achieve the claimed invention nor
a reasonable expectation of success from doing so.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-5,
12-14 and 18-21 as obvious
REVERSED
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