Ex Parte Laue et al

Patent Trial and Appeal Board

Dec 18, 2015

13302382 (P.T.A.B. Dec. 18, 2015)

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.
13/302,382 11/22/2011 Gregory Laue 0N9001-301007 1033
32009 7590 12/18/2015
BRADLEY ARANT BOULT CUMMINGS LLP
200 CLINTON AVE. WEST
SUITE 900
HUNTSVILLE, AL 35801
EXAMINER
GOFF II, JOHN L
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
12/18/2015 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
____________

Ex parte GREGORY LAUE, WILLIAM CLAYTON, MARK JOHNSON,
TIMOTHY WRIGHT, KEVIN MELTON, and GARRETT POE
____________

Appeal 2014-002489
Application 13/302,3821
Technology Center 1700
____________

Before GEORGE C. BEST, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

HEANEY, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134(a) of a decision of
the Primary Examiner to reject claims 1–3, 5, 8, 9, and 12–17. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
BACKGROUND
The subject matter on appeal relates to a method of seaming thermoset
polymeric sheets. Br. 2–3. In the method, seams are formed by overlapping
the sheets and applying heat and pressure to achieve a diffusion weld. Id.

1 Appellants identify the real party in interest as NeXolve Corp. Br. 2.
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Claim 1 is representative and reproduced from the Claims Appendix
of the Appeal Brief as follows (emphasis added):
1. A method of seaming polymeric sheets comprising:
(a) providing a plurality of polymeric sheets, wherein
at least one polymeric sheet comprises a first polyimide
thermoset plastic, and another polymeric sheet comprises a
second thermoset plastic;
(b) overlapping the polymeric sheets to produce an
interface such that the polymeric sheets are in direct contact at
the interface with the first polyimide thermoset plastic directly
contacting the second thermoset plastic; and
(c) applying heat and pressure to the interface to
diffusion weld the polymeric sheets.
THE REJECTIONS
The Examiner maintained the following rejections in the Answer:
1. Claims 1, 8, and 12–14 under 35 U.S.C. § 102(b) as
anticipated by Laue ’758.2
2. Claims 1–3 and 5 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Reynolds,3 Laue ’758, and Heaton.4
3. Claims 1, 9, and 12–17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hendrickson5 and
McCarville.6

2 Laue et al., U.S. 2008/0264561 A1, published Oct. 30, 2008, patented Jan.
5, 2010 as U.S. 7,641,758 B2 (hereinafter “Laue ’758”). The application at
issue in this appeal is a divisional of U.S. 8,129,011, which claims priority to
Laue ’758 as a continuation-in-part. Br. 3.
3 Reynolds et al., U.S. 5,626,314, issued May 6, 1997 (hereinafter
“Reynolds”).
4 Heaton, U.S. 6,132,541, issued Oct. 17, 2000.
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DISCUSSION
Appellants do not present separate arguments for dependent claims 8,
9, and 13–17, or independent claim 12; therefore, we need to address only
claims 1–3, and 5.
Rejection 1. Appellants’ only substantive argument against this
rejection is that the Examiner erred by applying Laue ’758 as prior art,
because the application at issue in this appeal claims priority to Laue ’758
and the claimed subject matter is entitled to the benefit of its filing date.
Br. 4. In particular, Appellants dispute the Examiner’s finding that Laue
’758 does not support the following limitation of claim 1: “wherein at least
one polymeric sheet comprises a first polyimide thermoset plastic, and
another polymeric sheet comprises a second thermoset plastic.” Ans. 2.
Appellants argue that Laue ’758 supports welding of “a second thermoset
plastic” generically, and is not limited to polyimides (Br. 4–5), although they
concede that it “does primarily describe welding of polyimides” (Br. 9).
Appellants’ argument is not persuasive.
The Examiner found that Laue ’758 discloses a method of seaming
polymeric sheets, but “[d]iffusion welding of polyimide to the genus of
‘thermoset’ plastics is never described” in Laue ’758. Ans. 3, 7. The
Examiner considered the three examples of welding thermoset polymers in
Laue ’758 upon which Appellants rely: (1) PMDA/ODA to PMDA/ODA;
(2) CP1 to CP1; and (3) PMDA/ODA to CP1. Laue ’758 2:17–23; 3:29–34.
The Examiner correctly found, however, that Laue ’758 describes both

5 Hendrickson et al., U.S. 2005/0277096 A1, published Dec. 15, 2005
(hereinafter “Hendrickson”).
6 McCarville et al., U.S. 4,931,126, issued June 5, 1990 (hereinafter
“McCarville”).
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PMDA/ODA and CP1 as “[e]xamples of thin film polyimides” (Laue ’758
2:18; Ans. 7), and that the embodiments that describe welding “two
dissimilar materials” only involve welding two polyimides, or a polyimide to
a thermoplastic (not a thermoset). Laue ’758 3:29–40; Final Act. 5. Further,
the Poe Affidavit,7 submitted by Appellants, suggests that a person of
ordinary skill would not have understood a description of welding two
polyimides predictably to describe welding of generic thermoset polymers.
Ans. 7; Poe Aff. ¶ 4 (“A polymer chemist would recognize that thermoset
polymers do not melt, so a polymer chemist would not predict successful
diffusion welding of thermoset polymers.”).
The Examiner also considered Appellants’ argument that a person of
ordinary skill would have understood Laue ’758’s reference in the
Background of Invention to “polyimides and other similar polymeric
materials” as a description of welding polyimides to the generic category of
thermosets. Laue ’758 1:24–28; Br. 9; Ans. 9–10. The Examiner correctly
found that Laue ’758’s disclosure that “other similar polymeric materials do
not possess a definite established melting point” is not, as Appellants
contend, a clear reference to the generic category of thermosets. Id. As the
Examiner reasoned, a person of ordinary skill may also have understood the
“melting point” to be a reference to thermoplastics (such as those listed at
Laue ’758 3:34–40). Ans. 9–10. Thus, the Examiner did not err in finding
that the written description of Laue ’758 would not have allowed a person of
ordinary skill in the art to recognize that the inventors clearly were in
possession of welding a polyimide to the genus of thermoset plastics, at the
time the application for Laue ’758 was filed. See id. Therefore, we affirm

7 Affidavit of Garrett Poe, submitted on June 1, 2012.
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the rejection of claims 1, 8, and 12–14 under 35 U.S.C. § 102(b) as
anticipated by Laue ’758.
Rejection 2. As with the first rejection, Appellants’ only substantive
argument is that the Examiner erred by applying Laue ’758 as prior art.
Appellants argue claims 2, 3, and 5 as a group and do not present arguments
against this rejection that are substantively different from those discussed in
connection with claim 1. Appellants do not present any substantive
argument concerning Reynolds and Heaton. Br. 11.
Claims 2, 3, and 5 depend directly or indirectly from claim 1 and
require that at least one of the polymeric sheets includes a coating and a core
(claim 2), and further that the coating is metallic (claim 3), and the core
comprises a thermoset material (claim 5). Appellants argue that the
description in Laue ’758 of thin polymer films with metallic coatings for use
in space application, and specific mention of solar shields, solar
concentrators, and solar sails, support claims 2, 3, and 5. Br. 9; Laue ’758
1:12–20. Appellants further rely on Laue ’758’s description of concerns
about the use of adhesives at low temperatures, and the low temperature
benefits of the invention. Br. 10; Laue ’758 3:9–10.
We are not persuaded by Appellants’ argument, because the
description in Laue ’758 is not commensurate with the scope of claims 2, 3,
and 5. Specifically, as the Examiner correctly found, claim 2 requires that
the pre-welding polymeric sheet include a coating and a core. Ans. 10.
Laue ’758 does not describe when the coating is applied to the core. Id.
Appellants do not dispute this (i.e., no Reply Brief has been filed).
Therefore, we affirm the rejection of claims 1–3 and 5 under 35 U.S.C.
§ 103(a) as unpatentable over Reynolds, Laue ’758, and Heaton.
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Rejection 3. Appellants argue the claims at issue in this rejection as a
group, of which claim 1 is representative. Appellants contend that the
Examiner erred by concluding that these claims would have been obvious,
because the combination of Hendrickson and McCarville would not have
suggested thermal sealing of a polyimide to a thermoset polymer, to a person
of ordinary skill in the art. Br. 11–12. In particular, Appellants argue that
Hendrickson, which is directed to a medical simulation system, only
cursorily discloses heat sealing of a polyimide, and does not describe how it
would be done. Id.; Hendrickson ¶ 55. Thus, Appellants argue that
Hendrickson is not enabling for heat sealing of thermoset polymers,
particularly because a person of ordinary skill “would not predict successful
diffusion welding of thermoset polymers.” Poe Aff. ¶ 4. Further,
Appellants argue that McCarville does not teach welding of thermoset
polymer sheets, but rather discloses joining of thermoplastic polymers. Br.
12.
We agree with Appellants that the Examiner has not adequately
explained how the combination of Hendrickson and McCarville would have
led a person of ordinary skill in the art to thermal sealing of a polyimide to a
thermoset polymer. The Examiner concedes that in Hendrickson, “the only
described material that is seamed/joined is Kapton [a polyimide].” Ans. 11.
Further, the Examiner does not dispute that McCarville only discloses
thermoplastic polymers. For these reasons, we reverse the rejection of
claims 1, 9, and 12–17 under 35 U.S.C. § 103(a) as unpatentable over
Hendrickson and McCarville.
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CONCLUSION
We affirm the rejection of claims 1, 8, and 12–14 under 35 U.S.C.
§ 102(b) as anticipated by Laue ’758.
We affirm the rejection of claims 1–3 and 5 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Laue ’758, Reynolds, and Heaton.
We reverse the rejection of claims 1, 9, and 12–17 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hendrickson and
McCarville.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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