12190250 (B.P.A.I. Mar. 20, 2012)

Ex Parte Pfaadt

Board of Patent Appeals and InterferencesMar 20, 2012

12190250 (B.P.A.I. Mar. 20, 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. 12/190,250 08/12/2008 Marcus Pfaadt WAS0967PUSA 8464 22045 7590 03/21/2012 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER SCOTT, ANGELA C ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 03/21/2012 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 MARCUS PFAADT __________ Appeal 2010-012355 Application 12/190,250 Technology Center 1700 ____________ Before TERRY J. OWENS, CATHERINE Q. TIMM, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1-10. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appellant’s invention is directed to a process for the production of moldings from cork particles where the cork particles are bonded with thermoplastic polymers (Spec. 1:7-8). Appeal 2010-012355 Application 12/190,250 2 Claim 1 is illustrative: 1. A process for the production of moldings of polymer-bonded cork particles, comprising binding the cork particles with a thermoplastic polymer binder in the form of a water-redispersible polymer powder comprising one or more thermoplastic polymers of one or more monomers selected from the group consisting of vinyl esters, (meth)acrylic esters of unbranched or branched alcohols having from 1 to 15 carbon atoms, vinylaromatics, olefins, 1,3-dienes, and vinyl halides, and, optionally, from 0.1 to 5% by weight, based on the total weight of the monomer mixture, of auxiliary monomers; one or more protective colloids selected from the group consisting of partially hydrolyzed and fully hydrolyzed polyvinyl alcohols, polyvinylpyrrolidones, polyvinyl acetals, starches, celluloses and their derivatives, proteins, lignosulfonates, poly(meth)acrylamide, polyvinylsulfonic acids and their water-soluble copolymers, melamine-formaldehydesulfonates, and naphthalene- formaldehydesulfonates; and, optionally, antiblocking agent(s). Appellant appeals the following rejections: 1. Claims 1-3 and 5-10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Dreher (US 6,716,922 B1 issued April 6, 2004) in view of Weitzel (US 2007/0037925 A1 issued February 15, 2007). 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Dreher in view of Weitzel and Strickman (4,042,543 issued August 16, 1977). 3. Claims 1 and 3 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 10 and 11 of copending Application No. 12/279,1371 in view of Dreher. REJECTIONS (1) AND (2) 1 Application 12/297,137 issued on August 9, 2011 as U.S. Patent 7,994,240 B2. Appeal 2010-012355 Application 12/190,250 3 ISSUE Did the Examiner reversibly err in concluding that the combined teachings of Dreher and Weitzel would have rendered obvious the process of claim 1 or the molding of claim 7 that includes binding cork particles with a thermoplastic polymer binder? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES Appellant argues that the combination of Dreher and Weitzel would not have suggested the claimed process or the claimed molding of binding cork particles with a thermoplastic binder because Dreher teaches a thermosetting binder (App. Br. 9-15; Reply Br. 1-2). Appellant contends that Dreher’s disclosure of thermosetting binders teaches away from the claimed process and molding that include thermoplastic binder. Id. Citing, inter alia, column 6, lines 15-19 of Dreher, Appellant contends that Dreher’s composition requires a “hydroxyl-containing amine” which functions as a cross-linker to form the thermosetting composition (App. Br. 11). The Examiner responds that Dreher teaches a “heat curable” polymeric binder, which means that the composition is capable of being cured (Ans. 8). The Examiner reasons that “if a thermoplastic material is combined with a cross-linker and then cured, it will become a thermoset . . . [but] until it is cured, it is still a thermoplastic material” (Ans. 8). The Examiner finds that Dreher’s disclosure of a hydroxyl-containing amine is optional because Dreher discloses at column 19, lines 24-25 that the hydroxyl-containing amine may be present in the composition from 0 to 20% by weight (Ans. 8-9). Appeal 2010-012355 Application 12/190,250 4 We have fully considered the positions of the Examiner and Appellant and find ourselves in complete agreement with Appellant’s position. Appellant’s Specification discloses on the first page that the invention is directed to a process of making cork moldings where the cork particles are bonded with “thermoplastic polymers.” The remainder of Appellant’s Specification and the claims themselves support Appellant’s contention that the binder is a “thermoplastic polymer binder.” See e.g., Claim 1; Spec. 2, 3. The Examiner concedes that “thermoplastic polymers” are a class of polymer that can be melted and cooled many times without a change in properties whereas thermoset polymers irreversibly cure (Ans. 8). Based on the Examiner’s definition of thermoplastic and the Specification disclosures, we construe “thermoplastic polymer” as one skilled in the art would construe such a term to mean “a polymer that softens when exposed to heat and returns to its original condition when cooled to room temperature.” Hawley’s Condensed Chemical Dictionary, 12th Ed. 1141 (1993). With this proper claim construction in mind, we find the Examiner’s strained construction of thermoplastic polymer as including a thermoset that is not cured as being overly broad and inconsistent with the Specification and the plain meaning of that term. The Examiner’s finding that Dreher teaches a thermoplastic polymer because the hydroxyl-containing amine cross linker is optional is not supported by the full Dreher disclosure2. Rather, as argued by Appellant, 2 Appellant cites to column 22, lines 32-37 of Dreher, which teaches that prior to use, the heat-curable binders of the invention are essentially uncrosslinked and are thereofore thermoplastic (App. Br. 12). We understand that disclosure of Dreher to use “thermoplastic” in a descriptive sense of how the uncured thermoset behaves prior to use. However, this Appeal 2010-012355 Application 12/190,250 5 Dreher discloses that the hydroxyl-containing amine may be incorporated into the binder composition by copolymerization in the polymer A2 and/or as a separate component (App. Br. 11; Dreher, col. 6, lines 15-19). In other words, the portion of the Dreher disclosure pointed out by the Examiner does teach that the hydroxyl-containing amine crosslinker is optional under situations where the crosslinker is part of the polymer A2. These findings all indicate that Dreher’s binder is a thermosetting composition, not a thermoplastic polymer within the meaning of the claims. For these reasons and on this record, we reverse the Examiner’s § 103 rejections based on the combination of Dreher in view of Weitzel. REJECTION (3): Obviousness-type Double Patenting Appellant does not present specific arguments that challenge the Examiner’s determination that claims 1 and 3 of the present application would have been an obvious variant of claims 10 and 11 of copending application 12/279,137 (now U.S. Patent 7,994,240) in combination with Dreher’s use of cork particles (App. Br. 17). Indeed, Appellant proffers to file a terminal disclaimer to obviate the obviousness-type double patenting rejection. Id. For the reasons, we affirm the Examiner’s obviousness-type double patenting rejection. DECISION The Examiner’s decision is affirmed-in-part. Dreher disclosure does not change the fact Dreher’s polymer is a thermoset and not included within the meaning of Appellant’s claimed “thermoplastic polymer.” Appeal 2010-012355 Application 12/190,250 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED-IN-PART sld