Ex Parte Roekens et al

Board of Patent Appeals and Interferences

Aug 7, 2012

11178769 (B.P.A.I. Aug. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BERTRAND J. ROEKENS, ENAMUL HAQUE and
STEVEN E. BAKER
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Appeal 2011-002009
Application 11/178,769
Technology Center 1700
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and ROMULO H.
DELMENDO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 5-7, 14, 16, and
19-23. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A low-static non-woven chopped strand mat comprising:

dried wet use chopped strand glass fibers at least partially coated with
a sizing composition and an antistatic agent to reduce the occurrence of
static electricity on said dried wet use chopped strand glass fibers, said
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antistatic agent being substantially uniformly positioned on said sizing
composition; and

a thermoplastic bonding material having a melting point less than the
melting point of said dried wet use chopped strand glass fibers, said
thermoplastic bonding material bonding at least a portion of said dried
chopped strand glass fibers and said thermoplastic bonding material; and

wherein said dried wet use chopped strand glass fibers and said
thermoplastic bonding material are substantially uniformly distributed
throughout said chopped strand mat, and

wherein said dried wet use chopped strand glass fibers have said
sizing composition applied thereto in an amount from 0.1 to 0.3 wt% solids.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Das ‘496 4,477,496 Oct. 16, 1984
Das ‘593 4,789,593 Dec. 06, 1988
Mulder 6,268,047 B1 Jul. 31, 2001

Appellants’ claimed invention is directed to a low-static non-woven
chopped strand mat comprising dried wet use chopped strand glass fibers
coated with a sizing composition and an antistatic agent. The sizing
composition is applied in an amount from 0.1 to 0.3 wt% solids.
Appealed claims 1, 5-7, 14, 16, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Das ‘593 in view of Mulder. Claims 20-
23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Das
‘593 in view of Das ‘496.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we agree with the Examiner that the claimed subject
matter would have been obvious to one of ordinary skill in the art within the
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meaning of § 103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s rejections.
There is no dispute that Das ‘593, like Appellants, discloses chopped
glass fibers which are used to make a chopped glass fiber reinforced
thermoplastic mat wherein the fibers are treated with a sizing composition
that includes an anti-static agent. While the reference does not disclose
applying the antistatic agent after the sizing composition, Appellants do not
contest the Examiner’s legal conclusion that, based on the Mulder
disclosure, it would have been obvious for one of ordinary skill in the art to
apply the antistatic agent after the sizing composition.
Appellants’ principal argument is that Das ‘593 discloses an amount
of sizing composition in the range of about 0.5 to about 8%, and not the
claimed range of 0.1 to 0.3 wt%. Appellants maintain that the term “about”
used by Das ‘593 allows for a 10% variance from the minimum amount of
0.5%, i.e., 0.45%.
The Examiner errs in finding that the reference term “about” permits a
10% variance of the disclosed range, i.e., 10% of 7.5%, such that the prior
art range overlaps the claimed range. However, the Examiner’s error is not
fatal to the conclusion of obviousness because a prima facie case of
obviousness exists even where there is no overlap but the prior art amount is
close enough such that a person of ordinary skill in the art would have
expected the same or similar properties. It is well settled that where
patentability is predicated upon a slight change in a condition of a prior art
composition, such as a change in concentration or the like, the burden is on
the applicant to establish with objective evidence that the change is critical,
i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575,
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1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). In the
present case we are convinced that the reference teaching that the sizing
composition may be used in an amount of about 0.5% would have suggested
the claimed amount of 0.3%. Appellants have proffered no objective
evidence which demonstrates that using a sizing concentration of 0.3%
produces an unexpected result compared to a concentration of 0.5%. In the
absence of such evidence the prima facie case of obviousness stands
unrebutted.
Appellants have not separately argued any particular claim on appeal.
Accordingly, since Appellants’ arguments against both rejections are
essentially the same, the separately rejected groups of claims stand or fall
together.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims is 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)(1)(iv).
AFFIRMED

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