Ex Parte Wang et al

Board of Patent Appeals and Interferences

Oct 13, 2009

10857478 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HUA WANG, RANDALL TODD MYERS, and
SCOTT MICHAEL DAVIS
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Appeal 2009-012197
Application 10/857,478
Technology Center 1700
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Decided: October 13, 2009
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Before CHUNG K. PAK, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-13, 15, 16, 54 and 55. Claims 3, 20, 34 and 46,
which are all of the other pending claims, stand withdrawn from
consideration by the Examiner. We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2009-012197
Application 10/857,478

The Invention
The Appellants claim a multilayer article. Claim 1 is illustrative:
1. A multilayer article comprising:

a substrate layer comprising a thermoplastic polymer and lofted fibers
in a range between about 15 weight % and about 75 weight % based on the
total weight of the substrate layer, and

a top layer comprising a thermoplastic polymer comprising structural
units derived from a 1,3-dihydroxybenzene and an organodicarboxylic acid.

The References
Shaw 4,643,940 Feb. 17, 1987
Vollenberg 2001/0016626 A1 Aug. 23, 2001
Brunelle (Brunelle ‘507) 6,306,507 B1 Oct. 23, 2001
Pickett (Pickett ‘671) 2001/0055671 A1 Dec. 27, 2001
Brunelle (Brunelle ‘657) 2002//0039657 A1 Apr. 4, 2002
Shakhnovich 6,410,620 B2 Jun. 25, 2002
(Shakhnovich ‘620)
Shakhnovich 6,414,058 B2 Jul. 2, 2002
(Shakhnovich ‘058)
Shakhnovich 6,417,253 B1 Jul. 9, 2002
(Shakhnovich ‘253)
Suriano 6,538,065 B1 Mar. 25, 2003
Pickett (Pickett ‘945) 2003/0072945 A1 Apr. 17, 2003
Pickett (Pickett ‘956) 6,572,956 B1 Jun. 3, 2003
Pickett (Pickett ‘814) 6,607,814 B2 Aug. 19, 2003
Pickett (Pickett ‘409) 6,610,409 B2 Aug. 26, 2003
Asthana (Asthana ‘488) 2003/0175488 A1 Sep. 18, 2003
Pickett (Pickett ‘096) 2003/0207096 A1 Nov. 6, 2003
Pickett (Pickett ‘474) 6,689,474 B2 Feb. 10, 2004
Wang (Wang ‘907) 2004/0028907 A1 Feb. 12, 2004
Wang (Wang ‘323) 2004/0166323 A1 Aug. 26, 2004
Wang (Wang ‘428) 2004/0253428 A1 Dec. 16, 2004
Wang (Wang ‘554) 2005/0158554 A1 Jul. 21, 2005
Wang (Wang ‘561) 2005/0158561 A1 Jul. 21, 2005
Graf 2005/0260369 A1 Nov. 24, 2005
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Appeal 2009-012197
Application 10/857,478

Asthana (Asthana ‘193) 2006/0017193 A1 Jan. 26, 2006
Wang (Wang ‘099) 2006/0019099 A1 Jan. 26, 2006
The Rejections
Claims 1, 2, 4-13, 15, 16, 54 and 55 stand rejected as follows:
1) under the judicially created doctrine of obviousness-type double patenting
over claims 1-68 of Brunelle ‘507, claims 1-50 of Shakhnovich ‘620,
claims 1-40 of Shakhnovich ‘058, claims 1-50 of Shakhnovich 253,
claims 1-80 of Suriano, claims 1-59 of Pickett ‘956, claims 1-69 of
Pickett ‘814, claims 1-75 of Pickett ‘409, or claims 1-64 of Pickett ‘474,
each in view of Brunelle ‘657 and Shaw,
2) provisionally under the judicially created doctrine of obviousness-type
double patenting over claims 1-75 of copending Application No. 09/908,396
(Pickett ‘945), claims 1-68 of copending Application No. 09/908,387
(Pickett ‘671), claims 1-41 of copending Application No. 09/753,878
(Vollenberg), claims 1-47 of copending Application No.10/210,746
(Asthana ‘488), claims 1-71 of copending Application No. 10/371,754
(Wang ‘907), claims 1-49 of copending Application No. 10/409,067
(Pickett ‘096), claims 1-70 of copending Application No. 10/461,005
(Wang ‘428), claims 1-81 of copending Application No. 10/737,944
(Wang ‘323), claims 1-63 of copending Application No. 10/760,826
(Wang ‘561), claims 1-52 of copending Application No. 10/761,714
(Wang ‘554), claims 1-40 of copending Application No. 10/849,108 (Graf),
claims 1-39 of copending Application No. 10/894,952 (Wang ‘099), or
claims 1-37 of copending Application No. 10/895,522 (Asthana ‘193), each
in view of Brunelle ‘657 and Shaw, and
3) under 35 U.S.C. § 103 over Brunelle ‘657 in view of Shaw.

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Appeal 2009-012197
Application 10/857,478

OPINION
We affirm the Examiner’s rejections.
Obviousness-type double patenting rejections
The Appellants argue that because the claims in the present
application may change, a determination of obviousness-type double
patenting is not possible (Br. 5).
The Appellants do not argue that the Examiner’s obviousness-type
double patenting rejections are incorrect. Therefore, we summarily affirm
those rejections.
Rejection under 35 U.S.C. § 103
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered primary facie
obvious, to one of ordinary skill in the art, lofted (claim 1) or loftable
(claims 54 and 55) fibers in the substrate of Brunelle ‘657’s multilayer
article?
Findings of Fact
Brunelle ‘657 discloses multilayer articles comprising a substrate
layer comprising at least one thermoplastic polymer, thermoset polymer,
cellulosic material, glass, ceramic, or metal, and at least one coating layer
thereon, said coating layer comprising at least one polymer comprising
structural units derived from at least one 1,3-dihydroxybenzene moiety and
at least one aromatic dicarboxylic acid moiety (¶ 0090). Substrate layers
that are thermoplastic or thermoset can contain at least one filler, especially
reinforcing fillers such as glass fibers (¶ 0102). The uses of the multilayer
articles include automotive interior components (¶ 0118).
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Application 10/857,478

Shaw discloses “a low density, fiber-reinforced resin composite”
(col. 1, ll. 40-41). The reinforcing fibers “comprise from about 10 to 50,
preferably 15 to 40, more preferably 25 to 40 percent by weight of the
composite” (col. 2, ll. 20-23). The fibers can be loftable fibers, i.e., non-
straight fibers that straighten and thereby contribute to the expansion of the
composite when the composite is heated (col. 1, ll. 25-32; col. 3, ll. 8-14;
col. 5, ll. 34-36). The degree of lofting can be controlled by heating the
composite between two surfaces which define a desired thickness and then
cooling the composite, advantageously under slight pressure, to below its
softening point (col. 1, ll. 51-57; col. 5, ll. 22-27, 37-41, 64-68). The low
density fiber-reinforced composite has the beneficial properties of high
strength-to-weight ratio compared to conventional foamed polymers, and
good flexural properties (col. 6, l. 66 – col. 7, l. 7). The uses of the low
density fiber-reinforced resin composite include automobile interior trim
parts (col. 7, ll. 43-46).
Analysis
The Appellants argue that Shaw’s disclosure that uncontrollable
lofting causes lofted material to be useless for making structural articles
identifies a problem with loftable fibers (Br. 9).
Shaw’s disclosure of uncontrolled lofting pertains to the prior art
(col. 1, ll. 25-35). Shaw indicates that Shaw’s controlled lofting produces
useful composites (col. 7, ll. 40-53).
The Appellants argue that Shaw’s disclosure that “except for smooth
surfaced embodiments, when adhered to a substrate by means of an adhesive
layer, the bond between said composite and the adhesive layer is
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Appeal 2009-012197
Application 10/857,478

surprisingly tenacious” (col. 7, ll. 20-23) indicates that “the use of lofted
fibers does not always attain a desired bonding” (Br. 10).
Shaw discloses that except for the smooth surfaced embodiments the
composite bonds with an adhesive layer surprisingly tenaciously due to the
presence of reinforcing fibers at the surface of the composite (col. 7, ll. 19-
36). That disclosure would have provided one of ordinary skill in the art
with a reasonable expectation that except for the smooth surfaced
embodiments, Shaw’s composite would adhere tenaciously to
Brunelle ‘657’s coating layer. See In re O’Farrell, 853 F.2d 894, 904 (Fed.
Cir. 1988) (“Obviousness does not require absolute predictability of success
. . . . For obviousness under § 103, all that is required is a reasonable
expectation of success”). For that reason and because Shaw’s composite has
good strength-to-weight ratio and flexural properties and, like
Brunelle ‘657’s multilayer article (¶ 0118), is useful for automobile interior
parts (col. 6, l. 66 – col. 7, l. 3; col. 7, ll. 41-46), Shaw would have led one of
ordinary skill in the art, through no more than ordinary creativity, to use
Shaw’s composite as the substrate in Brunelle ‘657’s multilayer article. See
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”).
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered primary facie
obvious, to one of ordinary skill in the art, lofted (claim 1) or loftable
(claims 54 and 55) fibers in the substrate of Brunelle ‘657’s multilayer
article.
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Appeal 2009-012197
Application 10/857,478

DECISION/ORDER
The rejections of claims 1, 2, 4-13, 15, 16, 54 and 55 1) under the
judicially created doctrine of obviousness-type double patenting over
claims 1-68 of Brunelle ‘507, claims 1-50 of Shakhnovich ‘620, claims 1-40
of Shakhnovich ‘058, claims 1-50 of Shakhnovich 253, claims 1-80 of
Suriano, claims 1-59 of Pickett ‘956, claims 1-69 of Pickett ‘814, claims 1-
75 of Pickett ‘409, or claims 1-64 of Pickett ‘474, each in view of
Brunelle ‘657 and Shaw, and 2) provisionally under the judicially created
doctrine of obviousness-type double patenting over claims 1-75 of
copending Application No. 09/908,396 (Pickett ‘945), claims 1-68 of
copending Application No. 09/908,387 (Pickett ‘671), claims 1-41 of
copending Application No. 09/753,878 (Vollenberg), claims 1-47 of
copending Application No.10/210,746 (Asthana ‘488), claims 1-71 of
copending Application No. 10/371,754 (Wang ‘907), claims 1-49 of
copending Application No. 10/409,067 (Pickett ‘096), claims 1-70 of
copending Application No. 10/461,005 (Wang ‘428), claims 1-81 of
copending Application No. 10/737,944 (Wang ‘323), claims 1-63 of
copending Application No. 10/760,826 (Wang ‘561), claims 1-52 of
copending Application No. 10/761,714 (Wang ‘554), claims 1-40 of
copending Application No. 10/849,108 (Graf), claims 1-39 of copending
Application No. 10/894,952 (Wang ‘099), or claims 1-37 of copending
Application No. 10/895,522 (Asthana ‘193), each in view of Brunelle ‘657
and Shaw, and 3) under 35 U.S.C. § 103 over Brunelle ‘657 in view of Shaw
are affirmed.
It is ordered that the Examiner’s decision is affirmed.

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Appeal 2009-012197
Application 10/857,478

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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