Ex Parte Semmes

Patent Trial and Appeal Board

May 24, 2016

12471633 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/471,633 0512612009
28289 7590 05/26/2016
THE WEBB LAW FIRM, P,C
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Edmund Bernard Semmes
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.
5840-091000 6261
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMUND BERNARD SEMMES
Appeal2014-007959
Application 12/471,633
Technology Center 1700
Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 filed an appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 1, 3-8, and 10-26. We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a).
1 Our decision refers to Appellant's Specification filed May 26, 2009
(Spec.), the Non-Final Office Action mailed Apr. 26, 2013 (Non-Final), the
Declaration dated Aug. 23, 2013 (Deel.), the Final Office Action mailed
Nov. 1, 2013 (Final), Appellant's Appeal Brief filed Mar. 31, 2014 (Appeal
Br.), the Examiner's Answer mailed May 12, 2014 (Ans.), and Appellant's
Reply Brief filed July 14, 2014 (Reply Br.).
2 Appellant identifies the real party of interest as Semmes, Inc. Appeal Br.
2.
Appeal2014-007959
Application 12/471,633
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
The claims on appeal are directed to cellular foamed articles, polymer
precursor dispersions, and methods of making a reinforced cellular foamed
article (see, e.g., claims 1, 8, and 18). Appellant discloses that polymer
foam systems are used in various applications due to their light weight,
conformability, good insulation qualities, relative high strength, and ease of
application. Spec. i-f 4. However, there is a need for reinforced polymeric
foams having superior mechanical and/or thermal properties than currently
available foam products. Spec. i-fi-1 5 and 6. In view of this, Appellant
discloses a method of making reinforced polymeric cellular foams, precursor
dispersions, and articles. Spec. i-f 3. Specifically, Appellant discloses
incorporating reinforcing fibers into a polymer precursor by agitating
organic fibers and the polymer precursor, along with an optional solid
component, to transform the organic fibers into a micropulp and reduce the
size of the organic fibers. Spec. i-fi-1172 and 174.
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Appeal Brief:
1. A cellular foamed article, comprising a polymeric foam
material and a micro- or nano-sized reinforcement fiber material
embedded in the cellular walls of the foam material.
Appeal Br. 24 (emphasis added).
The claims on appeal stand rejected as follows:
(1) Claims 1, 3, and 6 under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over
2
Appeal2014-007959
Application 12/471,633
Nakagawa; 3
(2) claims 1and3-7 under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Eichhorn;4
(3) claims 1 and 3-7 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eichhorn in view of Wheeler;5
(4) claims 8, 10-19, and 21-26 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Frances6 in view of Wheeler and
Eichhorn; and
(5) claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Frances, Wheeler, and Eichhorn and further in view of
Brierre; 7 and
(6) claims 8, 10-14, 16, and 17 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wheeler in view of Frances.
OPINION
Rejection under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) over
Nakagawa
Claims 1, 3, and 6 are rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over
Nakagawa. Appellant argues claims 1, 3, and 6 separately. Appeal Br. 10-
13.
3 Nakagawa, US 4,980,516, issued Dec. 25, 1990 ("Nakagawa").
4 Eichhorn et al., US 4,596,736, issued June 24, 1986 ("Eichhorn").
5 Wheeler, Jr. et al., US 2002/0137871 Al, published Sept. 26, 2002
("Wheeler").
6 Frances et al., US 2007/0196621 Al, published Aug. 23, 2007 ("Frances").
7 Brierre et al., US 5,028,372, issued July 2, 1991 ("Brierre").
3
Appeal2014-007959
Application 12/471,633
Claim 1
The dispositive issue on appeal is whether Appellant has shown
reversible error in the Examiner's finding that Nakagawa discloses a foam
having micro-size reinforcement fiber material "embedded in the cellular
walls of the foam material" (claim 1 (emphasis added)).
As an initial matter, we interpret the language "reinforcement fiber
material embedded in the cellular walls of the foam material" of claim 1.
During prosecution before the Examiner, the claim language should be given
its broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
any definitions or enlightenment contained in the written description of
Appellant's Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). "[T]he specification 'is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term."' See Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (en bane).
Appellant's arguments appear to be based upon a specific meaning of
"embedded in the cellular walls." In particular, Appellant contends the
fibers of Nakagawa are too long to be physically embedded within the
cellular walls ofNakagawa's foam. Appeal Br. 11-12 and Deel. i-fi-16 and 8.
However, Appellant's Specification does not set forth a specific meaning for
the language "embedded in the cellular walls."
In the "Summary of Claimed Subject Matter," Appellant cites
paragraphs 15, 159, 196, 206, and 208 of the Specification as support for
embedding micro- or nano-sized reinforcement fibers in the cellular walls of
a foam material. Appeal Br. 6. However, these paragraphs do not
4
Appeal2014-007959
Application 12/471,633
demonstrate an express intent to impart a novel meaning for the language
"embedded in the cellular walls." "Without evidence in the patent
specification of an express intent to impart a novel meaning to a claim term,
the term takes on its ordinary meaning." Optical Disc Corp. v. Del Mar
Avionics, 208 F.3d 1324, 1334 (Fed. Cir. 2000). Paragraph 15 provides a
brief description of Figure 6; paragraph 159 discusses incorporation of
reinforcement material into cell walls for "some non-limiting embodiments;"
paragraph 196 discusses examples; and paragraphs 206 and 208 do not
define how reinforcement fibers are embedded in cellular walls of a foam
material. Moreover, Figure 6, which Appellant discloses as an SEM
photo graph of a foam with embedded fibers, 8 in of itself, is not sufficient to
impart a novel meaning to the language "embedded in the cellular walls."
Appellant provides no other citations to the Specification to define the
language "embedded in the cellular walls." Further, the Examiner
determines the claims do not specify the size of cells or walls of the foam
material, the number of cells per cubic inch, and how the foam material is
made. Ans. 6. Appellant has not responded to these determinations.
In view of the above, we tum to the ordinary meaning of "embed."
The Merriam-Webster dictionary9 defines "embed" as "to make something
an integral part of." In view of the ordinary meaning of "embed," we
interpret "reinforcement fiber material embedded in the cellular walls of the
foam material" as meaning "reinforcement fiber material integrated as a part
of the cellular walls of the foam material." The claims do not define the
8 Spec. ,-r 15.
9 Merriam-Webster Dictionary entry for "embed," http://www.merriam-
webster.com/dictionary/embed (last visited May 6, 2016).
5
Appeal2014-007959
Application 12/471,633
extent of the cellular walls in which the fiber material is integrated, nor do
the claims preclude the reinforcement material from also residing outside of
cellular walls within the polymeric material generally or from penetrating
the cells of the foam.
Turning to the rejection on appeal, the Examiner finds Nakagawa
discloses a gasket comprising a resin foam with fibers having a diameter of
0.1---0.5 microns embedded in the foam. Non-Final 3. 10 The Examiner finds
the fibers would be inherently embedded in the cellular walls of the foam
material. Non-Final 3; Ans. 5---6.
Appellant contends Nakagawa is directed to macro-scale solid
materials and does not disclose fibers embedded in the cellular walls of a
foam. Appeal Br. 10-11 and Reply Br. 2. In particular, Appellant asserts
the rectangular parallelepiped structure disclosed by Nakagawa does not
function as microscopic sized foam cell walls and that the fibers disclosed
by Nakagawa are too long to be physically embedded because the fibers
would penetrate cell walls and negatively affect the resulting cellular
network. Appeal Br. 11-12 and Deel. i-fi-16 and 8.
Appellant's arguments are not persuasive. Nakagawa discloses a
gasket body of elastic material and micro-sized carbon fibers dispersed in
the elastic body. Nakagawa col. 2, 11. 13-23 and 30-31. Nakagawa further
discloses a "soft foam synthetic resin containing bubbles resulting from a
foaming agent or from mixing" as a material for the body, with one
embodiment of the gasket being silicone rubber with a foaming agent and
10 The Final Office Action incorporates the rejection set forth in the Non-
Final Office Action. Final 3.
6
Appeal2014-007959
Application 12/471,633
carbon fibers, as noted by the Examiner. 11 Nakagawa col. 3, 11. 10-17 and
col. 4, 11. 55-59. A "soft foam synthetic resin containing bubbles"
inherently has cellular walls defining the bubbles. Given that Nakagawa's
micro-sized fibers are dispersed throughout Nakagawa's foam, it is
reasonable to believe that the micro-sized fibers would be present within the
cellular walls of the bubbles. Nakagawa's disclosure of carbon fibers
"dispersed and retained in the elastic body of the base material" 12 reasonably
meets the requirement of a "reinforcement fiber material [integrated as a part
of] the cellular walls of the foam material" for claim 1.
With regard to Appellant's argument that Nakagawa's fibers are too
long to be physically embedded because the fibers would penetrate cell walls
and negatively affect the resulting cellular network, the claims do not
exclude penetration of fibers through the cell walls; they only require some
fibers be embedded within the cell walls. Fibers can be both embedded and
penetrate. The claims do not recite that the reinforcement fiber material is
embedded only in the cellular walls of the foam material. It is reasonable to
find that dispersing micro-sized carbon fibers in polymer containing foaming
agent as taught by Nakagawa would result in fiber material embedded in the
cell cellular walls of the resultant foamed material.
Moreover, although the Declaration makes some conclusory
statements about what Nakagawa teaches, 13 it provides no supporting
evidence persuasively showing that Nakagawa's cellular foamed article is
patentably different from the cellular foamed article of claim 1, particularly
11 Ans. 6.
12 Nakagawa col. 2, 11. 30-31.
13 Deel. ,-r 8.
7
Appeal2014-007959
Application 12/471,633
in view of the above interpretation of claim 1. See Jn re Altenpohl, 500 F .2d
1151, 1158 (CCPA 1974) (lack of factual support rendered an affidavit of
little probative value in overcoming obviousness rejection). For example,
the statement in paragraph 6 of the Declaration that fibers penetrating cell
walls cause foam products to be "negatively affected by incomplete and
inconsistent cellular network formation, gas release and a failure to improve
material properties" is not supported by evidence. Nor do we place much
weight upon Declarant' s statements that the references do not render the
invention obvious. In re Carroll, 601F.2d1184, 1186 (CCPA 1979) ("little
weight is given to an expert's opinion on an ultimate legal question.").
Weighing the evidence as a whole, we determine a preponderance of
the evidence weighs in favor ofunpatentability. Therefore, Appellant has
not shown the Examiner reversibly erred by finding Nakagawa discloses a
foam having micro-size fibers embedded in the walls of the foam.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by or under 35 U.S.C. § 103(a) as being
unpatentable over Nakagawa.
Claim 3
Claim 3 depends from claim 1 and further recites "wherein the
polymeric foam material comprises at least one polyurethane." The
Examiner finds Nakagawa discloses polyurethane as a material for a gasket.
Non-Final 3. Appellant contends the polyurethane rubber disclosed in
column 4, lines 30-34 of Nakagawa does not regard a foam and cannot be
transformed into a foam. Appeal Br. 12.
8
Appeal2014-007959
Application 12/471,633
Appellant's argument ignores the portion of Nakagawa relied upon by
the Examiner, namely, the disclosure in column 3, lines 12-18 that lists
polyurethane rubber, silicone rubber, and soft foam synthetic resin
containing bubbles resulting from a foaming agent as example materials for
the gasket. Ans. 6-7. Although the column 4, lines 30-34 disclosure of
using polyurethane rubber is silent regarding a foaming agent, the more
generic disclosure in column 3, lines 12-18 along with the example of
silicone rubber including foaming agent to create a soft foam body in
column 4, lines 55---65 supports the Examiner's rejection. Appellant has not
responded to the Examiner's position.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's rejection of claim 3 under 35 U.S.C.
§ 102(b) as being anticipated by or under 35 U.S.C. § 103(a) as being
unpatentable over Nakagawa.
Claim 6
Claim 6 depends from claim 1 and further recites "wherein the
reinforcement fiber material is present in an amount of from about 0. 01 to
about 10.0 wt% based on the total weight of the foamed article." The
Examiner finds Nakagawa discloses the use of 10 wt% carbon fiber, citing
Table 2. Non-Final 3.
Appellant argues Table 2 of Nakagawa regards a polyurethane rubber
material, not a foam material. Appeal Br. 12-13. Appellant's argument is
not persuasive of reversible error. Although Table 2 is directed to
polyurethane rubber, Table 2 suggests the use of 10 wt% carbon fibers and
Nakagawa discloses the use of a foam material, as discussed above. In re
9
Appeal2014-007959
Application 12/471,633
Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation"). Thus, a
preponderance of the evidence supports a determination that it would have
been obvious to determine the workable range for carbon fiber content in a
polyurethane foam gasket, and that the determined range would include
values within the claimed range, in view of the disclosure of Nakagawa.
Even though Nakagawa does not "describe" using a concentration of
fibers in polyurethane foam within the claimed range either expressly or
inherently so as to support a finding of anticipation, a preponderance of the
evidence supports the Examiner's conclusion of obviousness.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's rejection of claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Nakagawa.
Rejection under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) over
Eichhorn
Claims 1and3-7 are rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over
Eichhorn.
The Examiner finds Eichhorn discloses a laminate structure including
an outer layer of polyurethane with aromatic polyamide fibers. Non-Final 4.
The Examiner further finds Eichhorn discloses the use of foaming agents.
Non-Final 4. The Examiner determines the outer layer of the laminate
structure is a wall of a structure that includes a foaming agent and therefore
is inherently a foam with a cellular structure. Non-Final 4. Alternatively,
10
Appeal2014-007959
Application 12/471,633
the Examiner concludes it would have been obvious to use the foaming
agent of Eichhorn to foam the outer layer. Non-Final 4.
Appellant contends the outer layer of Eichhorn is a fiber reinforced
solid plastic, not a foam, and it would not have been obvious to modify the
outer layer to be a foam because Eichhorn is directed to a high strength
laminate structure and the use of a foamed outer layer would undermine that
purpose. Appeal Br. 13-14 and Reply Br. 2-3.
Appellant's argument is persuasive. The outer layer of Eichhorn does
not support the Examiner's rejection. Eichhorn does not disclose the outer
layer is a foam material. Moreover, as asserted by Appellant, Eichhorn
discloses a desire for "a high strength fiber-reinforced resin." Eichhorn col.
1, 11. 3 8--41. In view of this, the Examiner does not provide a sufficient
rationale for one of ordinary skill in the art to modify the outer layer of
Eichhorn to be a foam material instead of a solid material.
In view of the above, we do not sustain the Examiner's rejection of
claims 1and3-7 under 35 U.S.C. § 102(b) as being anticipated by or under
35 U.S.C. § 103(a) as being unpatentable over Eichhorn.
Rejection under 35 U.S.C. § 103(a) over Eichhorn and Wheeler
Claims 1 and 3-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eichhorn in view of Wheeler.
Appellant does not argue claims 3-7 separately from claim 1. Appeal Br.
19-21. We select claim 1 as representative for resolving the issues on
appeal.
The Examiner finds Eichhorn discloses a laminate structure having an
outer layer of polyurethane resin with fibers and that Eichhorn discloses the
11
Appeal2014-007959
Application 12/471,633
use of a foaming agent. Non-Final 6. The Examiner finds Eichhorn does
not explicitly disclose that the outer layer is a foam material but finds
Wheeler discloses a foamed structure of polyurethane reinforced with
fibrous material. Non-Final 7. The Examiner concludes it would have been
obvious to add a foaming agent to the outer layer of Eichhorn to produce a
foamed material. Non-Final 7-8.
Appellant argues the outer layer of Eichhorn is not a foam material
and it would not have been obvious to modify the outer layer to be a foam
material in view of Eichhorn disclosed desire for a high strength fiber
reinforced material, as discussed above with regard to the § § 102 I 103
rejection over Eichhorn. Appeal Br. 19-21.
Appellant's arguments are persuasive. As discussed above with
regard to the§§ 102 I 103 rejection, the outer layer of Eichhorn does not
support the Examiner's rejection. Therefore, we do not sustain the
Examiner's decision to reject claims 1 and 3-7 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Eichhorn in view of Wheeler.
Rejection under 35 U.S.C. § 103(a) over Frances, Wheeler, and
Eichhorn
Claims 8, 10-19, and 21-26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Frances in view of Wheeler and
Eichhorn. Appellant does not argue the claims separately. Appeal Br. 15-
18. We select claim 8 as representative for resolving the issues on appeal.
Claim 8 recites a polymer precursor dispersion comprising at least one
polymer precursor comprising a polyol, at least one blowing agent, and a
reinforcement fiber material.
12
Appeal2014-007959
Application 12/471,633
The dispositive issue on appeal is whether Appellant has
demonstrated the Examiner reversibly erred by concluding it would have
been obvious to modify Frances to include a blowing agent in order to
produce a foamed article.
Appellant contends Frances does not disclose a foam and Eichhorn
does not cure this deficiency because Eichhorn does not relate to reinforced
foams. Appeal Br. 15-16. Appellant asserts Wheeler is directed to the
addition of fibers to a polymeric material but not functionalizing fibers in a
polymer precursor and simply adding a blowing agent to the polymer of
Frances would not result in a foamable polymer. Appeal Br. 16-18; Reply
Br. 3--4; and Deel. i-fi-14, 5, 9-14, 17, and 18. Appellant further argues
Frances is not directed to highly viscous prepolymers commonly recognized
as necessary to produce foams. Appeal Br. 15 and 18 and Deel. i-fi-f 17 and
18.
The Examiner finds Frances discloses a coating composition
comprising organic fiber, such as Kevlar® micropulp, that is first dispersed
in a first component comprising polyol. Non-Final 8.
The Examiner finds Frances does not explicitly disclose the use of a
blowing agent but finds Wheeler discloses a foam composition including
fibrous material, such as Kevlar® pulp, mixed with a polyol component and
further including a blowing agent. Non-Final 9. The Examiner concludes it
would have been obvious to add blowing agent to the dispersion of
micropulp and polyol of Frances to produce a foamed article. Non-Final 9.
Wheeler discloses a process for preparing a fibrous material, such as
Kevlar® pulp, which includes "adding the fibrous material to the polyol
component," discloses blowing agents may be added to polyols before the
13
Appeal2014-007959
Application 12/471,633
polyols are reacted with isocyanates, and discloses examples in which
Kevlar® pulp is added to polyol reagent and in which water is added to a
polyol reaction component to create a foam. Wheeler i-fi-f 12, 25, 29, 43, and
44. As a result, the disclosure of Wheeler supports the Examiner's findings
and conclusion.
Further, the statements set forth in the cited paragraphs of the
Declaration are not persuasively supported by corroborating evidence in a
way that supports Appellant's contention that adding a blowing agent to the
polymer of Frances would not result in a foamable polymer. Moreover,
many of the statements relate to features not recited in the claims. For
example, paragraph 11 of the Declaration cites Exhibits D and E to
demonstrate that Wheeler's process does not result in a dispersion, is not
homogeneous, and not functionalized. However, claim 8 does not recite that
fibers are "functionalized" or recite a degree of homogeneity of a dispersion
or foam product. As a result, the statements in the Declaration have little
probative value, especially when weighed together with the other evidence
of record.
Therefore, Appellant has not demonstrated the Examiner reversibly
erred by concluding it would have been obvious to modify Frances to
include a blowing agent in order to produce a foamed article.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's rejection of claims 8, 10-19, and 21-26
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Frances in view of Wheeler and Eichhorn.
14
Appeal2014-007959
Application 12/471,633
Rejection under 35 U.S.C. § 103(a) over Frances, Wheeler, Eichhorn,
and Brierre
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Frances, Wheeler, and Eichhorn and further in view
of Brierre. Claim 20 depends from independent claim 18 and further recites
"wherein the reinforcement fiber material is a polymeric material formed in
situ in the dispersion."
The Examiner finds Frances, as modified by Wheeler and Eichhorn,
does not disclose forming a fiber reinforcement in-situ in a dispersion. Non-
Final 12. The Examiner finds Brierre discloses a process of producing
aramid pulp in which stoichiometric amounts of aromatic diacid halide and
aromatic diamine are contacted and agitated and aramid pulp is isolated from
a gel. Non-Final 12. The Examiner concludes it would have been obvious
to use the process of Brierre so aramid fibers are produced from the
dispersion of Frances, as modified by Wheeler and Eichhorn. Non-Final 12.
Appellant argues Brierre does not disclose forming a fiber
reinforcement in-situ in a dispersion. Appeal Br. 21. Appellant's argument
is persuasive. Brierre discloses forming a para-aramid pulp from a solution,
not in-situ in a dispersion including a polymer precursor. Brierre col. 1, 1. 45
to col. 2, 1. 3. Therefore, the combination of Frances, Wheeler, Eichhorn,
and Brierre does not suggest the method of claim 20. As a result, we do not
sustain the Examiner's decision to reject claim 20 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Frances, Wheeler, Eichhorn, and
Brierre.
15
Appeal2014-007959
Application 12/471,633
Rejection under 35 U.S.C. § 103(a) over Wheeler and Frances
Claims 8, 10-14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wheeler in view of Frances.
Appellant traverses the Examiner's rejection by referring to arguments
presented for the § 103 rejection over the combination of Frances, Wheeler,
and Eichhorn. Appeal Br. 19. In those arguments, Appellant asserts
Wheeler does not suggest processing and functionalizing fibers in a polymer
precursor. Appeal Br. 18. The Examiner, however, finds Frances discloses
a coating composition comprising a micropulp made by contacting an
organic fiber with a medium including a liquid component, a solid
component, and a first reaction component, such as a polyol, as a polymer
precursor. Final 4--5. Appellant does not contest this finding. Appellant
further asserts Wheeler does not disclose embedding fibers in a cellular
structure. Appeal Br. 18. Claim 8, however, recites a polymer precursor
dispersion and does not recite fibers embedded in a cellular structure.
Appellant contends Frances is not directed to polymeric foams and it
would not have been not obvious to apply the techniques of Frances to a
foamable polymer. Appeal Br. 15 and 19 and Reply Br. 3--4. However, the
Examiner finds Wheeler discloses a foamed shaped article made from a
composition including a fibrous material. Final 4. In other words, the
Examiner relies upon Wheeler for the disclosure of a foam, not Frances.
Moreover, the Examiner finds Frances is directed to a polymer dispersion
comprising a polyol and microfiber which has been processed in the
presence of the polyol, similar to the dispersion recited in claim 8. Final 4--5
and Ans. 11-12. Appellant does not dispute these findings and therefore has
not demonstrated the Examiner reversibly erred.
16
Appeal2014-007959
Application 12/471,633
Therefore, for the reasons discussed above and those set forth in the
Examiner's Answer, we sustain the Examiner's rejection of claims 8, 10-14,
16, and 17 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Wheeler in view of Frances.
We further extend the § 103 rejection over the combination of
Wheeler in view of Frances to claims 1 and 3-7. With regard to claim 1, we
find that Wheeler discloses sprayable polymeric compositions including a
polyol and an isocyanate as reaction materials, as well as a fibrous
reinforcement material, such as a Kevlar® pulp. Wheeler i-fi-f l, 12, and 25.
Wheeler discloses the use of blowing agents and an example in which water
is added to create a foam. Wheeler i-fi-129 and 44. Because the fibrous
reinforcement material is included in the final foamed product of Wheeler,
the reinforcement material would have a "reinforcement fiber material
[integrated as a part of the] cellular walls of the foam material" in accord
with our claim construction of claim 1 above.
Wheeler further discloses that carbon nanotubes can be used as a
reinforcement material. Wheeler i125. To the extent Wheeler does not
explicitly disclose a size of the reinforcement material, Frances discloses a
sprayable coating composition including a micropulp, such as a Kevlar®
pulp. Frances i-fi-f l 0, 19, 28. Frances discloses the fibers of the micropulp
have an average length of 0.01to200 micrometers. Frances i-f 12. Frances
discloses the composition can be sprayed without plugging a spray nozzle or
other parts of spraying equipment. Frances i-fi-16 and 20.
Based on the foregoing, we conclude it would have been obvious to
one of ordinary skill in the art to modify the composition of Wheeler to use a
fibrous pulp having the average length disclosed by Frances in order to
17
Appeal2014-007959
Application 12/471,633
provide a composition that can be sprayed without plugging a nozzle or
other spraying equipment. See also KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 417 (2007) ("if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill").
With regard to claim 3, Wheeler discloses the use of polyurethane as a
component of the polymeric composition. Wheeler i-fi-f 12 and 23.
For claims 4 and 5, we find Wheeler discloses that Kevlar® pulp can
be used as a reinforcement material and that Kevlar® is an aromatic
polyamide. Wheeler i-fi-17 and 25.
With regard to claims 6 and 7, Wheeler discloses that the
reinforcement material can be used in an amount of about 0.50 wt% to 30
wt% of the total weight percent of the polymeric composition. Wheeler
i125. This range overlaps with the ranges recited in claims 6 and 7. A prima
facie case of obviousness arises when the ranges of a claimed composition
overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003).
Therefore, pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection of claims 1 and 3-7 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Wheeler in view of
Frances.
Unexpected results
Appellant asserts the claimed invention provides unexpected results,
citing the results set forth in the Examples portion of the Specification.
18
Appeal2014-007959
Application 12/471,633
Appeal Br. 21-22 and Reply Br. 5. In particular, Appellant contends the
results depicted in Figures 1 and 2 demonstrate that the addition of
approximately 0.5 wt% of aramid fibers increases tensile strength by, on
average, between 79% and 100% and increases compression strength by, on
average, 115% in comparison to a control sample without sacrificing
density, thermal conductivity, processability, or any other key parameters,
and these benefits would not have been expected from the disclosures of the
applied references. Appeal Br. 22 and Deel. i-fi-1 23-26.
First, a showing of unexpected results cannot overcome the rejection
of claims 1, and 3-7 under 3 5 U.S. C. § 102(b) as anticipated by Nakagawa,
which we sustain. See In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974)
("If the rejection under § 102 is proper, however, appellant cannot overcome
it by showing such unexpected results or teaching away in the art, which are
relevant only to an obviousness rejection.").
With respect to the obviousness rejections that we sustain, and the
new ground of rejection, we note that the burden of establishing unexpected
results rests squarely upon the party asserting them. In re Klosak, 455 F.2d
1077, 1080 (CCP A 1972). One of the things an appellant must establish is
that the asserted improved property would have been viewed as unexpected
by one of ordinary skill in the art. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1371 (Fed. Cir. 2007) ("[A]ny superior property must be unexpected
to be considered as evidence of non-obviousness," and a proper evaluation
considers what properties were expected).
According to Appellant, the Examples in the Specification show that
producing a reinforced polymeric foam material through a process including
milling fibers in the presence of a polyol precursor greatly increases the
19
Appeal2014-007959
Application 12/471,633
tensile and compression strength of the resulting foam material. Appeal Br.
22. Appellant reports that the addition of only approximately 0.5 wt% of
aramid fibers increase the tensile strength by on average between 79% and
100% and increase the compression strength by on average 115% as
compared to a control sample with no aramid fibers. Id.
First, we agree with the Examiner that adding reinforcing fibers to
improve strength would be an expected result. Ans. 19. As stated by the
Examiner, the purpose of adding reinforcing fiber is to "'reinforce,'" i.e.,
improve strength, to an article being reinforced. Id. Appellant counters that
it is the extent of the increase that is unexpected, Reply Br. 5, but there is no
comparative data to show that the extent of the increase would have been
unexpected to one of ordinary skill in the art. In fact, the comparison is not
even a comparison to the closest prior art. Several of the references teach
reinforcing a polymeric foam material and represent closer prior art than
Appellant's controls. With regard to the prior art, "when unexpected results
are used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art." In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The baseline control samples
used in the Examples portion of the Specification are not a comparison to the
closest prior art but "represent the respective values of foam samples that
have the same polymer formulation but do not have an added reinforcement
material." Spec. i1201.
Nor are the results commensurate in scope with the claims. See In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980). As stated by Appellant, 14 the Specification
14 Appeal Br. 22.
20
Appeal2014-007959
Application 12/471,633
discusses examples having 0.5 wt% and 1 wt% of aramid fibers. However,
many of the claims do not limit the fiber concentration (see, e.g., claims 1
and 18), and other claims encompass a greater range of fiber reinforcement
content (see, e.g., claim 8 (about 0.01 to about 50.0 wt%) and claim 6
(about 0.01 to about 10 wt%)).
Based on the foregoing, Appellant's evidence of unexpected results is
entitled to little weight.
DECISION
On the record before us, we:
A. sustain the Examiner's decision to reject claims 1 and 3 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Nakagawa;
B. do not sustain the Examiner's decision to reject claim 6 under
35 U.S.C. § 102(b) as anticipated by Nakagawa;
C. sustain the Examiner's decision to reject claim 6 under
35 U.S.C. § 103(a) as unpatentable over Nakagawa;
D. do not sustain the Examiner's decision to reject claims 1 and 3-
7 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as unpatentable over Eichhorn;
E. do not sustain the Examiner's decision to reject claims 1 and 3-
7 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Eichhorn in view of Wheeler;
F. sustain the Examiner's decision to reject claims 8, 10-19, and
21-26 over the combination of Frances, Wheeler, and Eichhorn;
21
Appeal2014-007959
Application 12/471,633
G. do not sustain the Examiner's decision to reject claim 20 under
35 U.S.C. § 103(a) as unpatentable over the combination of Frances in view
of Wheeler, Eichhorn, and Brierre; and
H. sustain the Examiner's rejection of claims 8, 10-14, 16, and 17
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Wheeler in view of Frances.
We also enter a new ground of rejection under § 103 for claims 1 and
3-7 over the combination of Wheeler in view of Frances.
We affirm-in-part the decision of the Examiner to reject the claims.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2014). This section provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
22
Appeal2014-007959
Application 12/471,633
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l) (2014).
AFFIRMED-IN-PART;
NEW GROUND OF REJECTION, 37 C.F.R. § 41.50(b)
23