Ex Parte Miele et al

Board of Patent Appeals and Interferences

May 21, 2012

11199929 (B.P.A.I. May. 21, 2012)

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.
11/199,929 08/09/2005 Philip Francis Miele 7547 3534
29602 7590 05/21/2012
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
05/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PHILIP FRANCIS MIELE
and Diana Kim Fisler
________________

Appeal 2010-009268
Application 11/199,929
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009268
Application 11/199,929

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A. Introduction1
Philip Francis Miele and Diana Kim Fisler (“Miele”) timely appeal
under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-22, which are
all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We AFFIRM.
The subject matter on appeal relates to a glass fiber composite having
a formaldehyde-free curing agent, a binder based on a renewable resource,
namely an agricultural isolate such as soy protein, and an organosilane that
bonds the binder to the glass fibers.
Claim 1 is representative and reads:
1. A method comprising:
a) forming glass fiber substrate;
b) applying a binder composition to the glass fiber
substrate to form an uncured glass fiber batt,
wherein the binder comprises:
i) agricultural isolates;
ii) at least one formaldehyde-free curing agent; and
iii) an organosilane; and
c) curing the glass fiber batt to form a glass fiber
composite.
(Claims App., Br. 8; indentation, paragraphing, and emphasis added.)

1 Application 11/199,929, Glass Fiber Composite and Method of Making
Glass Fiber Composites Using a Binder Derived from Renewable
Resources, filed 9 August 2005. The specification is cited as “Spec.” The
real party in interest is listed as Johns Manville. (Appeal Brief,
filed 9 February 2010 (“Br.”), 2.)
2 Office action mailed 20 July 2009.
Appeal 2010-009268
Application 11/199,929

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The Examiner has maintained the following grounds of rejection:3
A. Claims 1-18 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Liang,4 and Li.5
B. Claims 19-22 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Liang, Li, and Lehnert.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Miele argues that the Examiner erred in combining the teachings of
Li, regarding the use of difunctional agents such as 1,6-diaminohexane to
increase the number of functional groups in soy-protein based adhesives,
with the teachings of Liang regarding the use of silane coupling agents to
enhance the adhesion of glass fibers to a soy-protein based binder. (Br. 3-4.)
According to Miele, Li relates to adhesives and lignocellulosic composites,
and is concerned with improving the bonding of the adhesive to
cellulosic/wood materials, not glass. In Miele’s words, “[t]he fact that

3 Examiner’s Answer mailed 18 March 2010 (“Ans.”).
4 Feng Liang and Youqi Wang, Effects of Silane Coupling Agents on the
Interface of Soy Protein and Glass Fiber, in Proceedings of the American
Society for Composites Fourteenth Technical Conference, 511-20 (James
Martin Whitney ed., CRC Press 1999).
5 Kaichang Li and Yuan Liu, Modified Protein Adhesives and
Lignocellulosic Composites Made from the Adhesives, U.S.
Patent 7,060,798 B2 (13 June 2006), based on an application
filed 13 May 2003.
6 Charles W. Lehnert and Brian G. Randall, Gypsum Board and Finishing
System Containing Same, U.S. Patent 5,791,109 (1998).
Appeal 2010-009268
Application 11/199,929

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adding certain functional groups to an adhesive for wood would improve the
adhesive for wood materials, does not suggest that it would with relative
predictability also be useful and improved for glass—a totally different
material.” (Id. at 4, 2d full para.) Miele does not otherwise dispute the
Examiner’s findings of fact or the application of the teachings of the
references to the appealed claims.
The Examiner (Ans. 4) finds that Liang teaches curing a composition
comprising a soy protein isolate powder, glass fibers, and an organosilane,
namely 3-(2 aminoethyl)-aminopropyl-trimethoxysilane (“AAPS”),
NH2(CH2)2NH(CH2)3Si(OCH3)3.
The Examiner finds further that Liang does not teach a “separate curing
agent . . . but rel[ies] on the naturally present reactive groups on the proteins
to crosslink them (page 514) in addition to the ability of the organosilane to
crosslink them (page 515).” (Ans., sentence bridging 4-5.)
The Examiner finds that Li teaches soy-protein based adhesives in
which the proteins are modified by reaction with multifunctional compounds
such as 1,6-hexanediamine, a formaldehyde-free amine-based curing agent.
(Ans. 5, 1st full para.) The resulting adhesives are said to have superior
adhesive strength and water resistance. (Id., citing Li col. 3, ll. 24-36.)
The Examiner reasons that it would have been obvious to add a curing
agent such as the ones taught by Li to the compositions taught by Liang to
enhance the adhesive strength and water resistance of the soy-protein based
glass fiber composites. (Ans. 5, 2d full para.)
Appeal 2010-009268
Application 11/199,929

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Liang teaches that side groups Ri of a peptide chain may react with
corresponding side groups Ri of an adjacent peptide chain via crosslinking
reactions. (Liang 514, 1st para. and Fig. 3.) Liang explains that the
aminosilane AAPS reacts with amino (NH2) or carboxylic acid (COOH)
functional groups on the protein backbone via the amino group, and with
groups [Si-OH] on the glass via the methoxy (-OCH3) groups, thereby
linking the protein to the glass. (Liang 514-15.) Liang explains further that
“[t]he amino group of the AAPS coupling agent serves as a bridge between
two adjacent peptide chains. On the other hand, the methoxy group serves
as the bridge between the glass-fiber surface and the amino groups.
Therefore, the glass fiber and the protein are linked through these two
bridges.” (Id. at 515, last para., referring to Fig. 7 at 516.)
Liang Figure 7 is reproduced below:

{Liang Fig. 7 illustrates crosslinking and coupling reactions amongst AAPS,
soy protein, and glass fibers}
Liang clearly teaches that the AAPS agent crosslinks soy protein and also
binds the soy protein to the glass fibers.
Appeal 2010-009268
Application 11/199,929

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Li teaches that the adhesiveness and strength of soy protein is
enhanced by increasing the number of functional groups such as amino
groups “free for substrate adhesive bonding and crosslinking when the
adhesive composition is heated.” (Li col. 3, ll. 1-3.)
Miele’s arguments that Li is not analogous art to Liang because Li is
concerned with adhesives to cellulosic materials, rather than to glass (Br. 4)
are not persuasive of harmful error in the Examiner’s rejection. It is well-
settled that a prior art reference “is reasonably pertinent if, even though it
may be in a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Here, the common teachings of
Liang and Li relating to the chemical reactions that crosslink peptide chains,
and to ways of enhancing the number of those crosslinks as well enhancing
the opportunities for binding to the substrate suffice to establish the
reasonable pertinence of the teachings of Li to those of Liang.
Miele has not raised substantively distinct arguments for the separate
patentability of any of the dependent claims, including those rejected further
in view of Lehnert. We also note that Miele has not raised arguments based
on “secondary” evidence of patentability, such as unexpected results.
We therefore AFFIRM the Examiner’s rejections.
C. Order
We AFFIRM the rejection of claims 1-18 under 35 U.S.C. § 103(a) in
view of the combined teachings of Liang and Li.
Appeal 2010-009268
Application 11/199,929

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We AFFIRM the rejection of claims 19-22 under 35 U.S.C. § 103(a)
in view of the combined teachings of Liang, Li, and Lehnert.
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

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