Jacobus Hendricus Antonius Van Der Woude et al.

Patent Trials and Appeals Board

Jan 31, 2020

12267963 - (D) (P.T.A.B. Jan. 31, 2020)

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.
12/267,963 11/10/2008 Jacobus Hendricus Antonius Van Der Woude 032961-0366601 7257
23342 7590 01/31/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JACOBUS HENDRICUS ANTONIUS VAN DER WOUDE,
JACOB CORNELIS DIJT, JOHN THEO PENNING,
RONALD BOELMAN, and JOHANNES LEONARDUS TABAK
____________

Appeal 2018-008500
Application 12/267,963
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1, 4–9, 11–14, 16, 17, 19–22,
24–37, and 39–47.2 We have jurisdiction over this appeal under 35 U.S.C. §
6(b).
We AFFIRM.

1 Appellant identifies Electric Glass Fiber American, LLC as the real party
in interest. Appeal Brief filed February 23, 2018 (“Appeal Br.”), 1.
2 Final Office Action entered May 10, 2017 (“Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims an aqueous sizing composition for glass fibers for
reinforcing organic composite materials. Appeal Br. 1–3. Independent
claims 1 and 46 illustrate the subject matter on appeal, and are reproduced
below with contested language italicized:
1. An aqueous sizing composition for glass fibers for
reinforcing organic composite materials, comprising:
an acid-amine component in an amount up to 80 weight
percent on a total solids basis,
the acid-amine component comprising molecules
of at least one primary amine associated with molecules
of at least one phosphorus-containing acid or sulfur-
containing acid,
wherein the molecules of the at least one amine are
associated with the molecules of the at least one
phosphorus-containing acid or sulfur-containing acid
through Lewis acid-base interactions,
wherein the phosphorus atom in the phosphorus-
containing acid has an oxidation state that is less than 5,
wherein the molar ratio of the at least one
phosphorus-containing acid or sulfur-containing acid to
the amine is between about 0.1 and about 1, and
wherein the acid-amine component is not formed
using salts of phosphorus-containing acids or salts of
sulfur-containing acids;
a film former in an amount greater than 5 weight percent
on a total solids basis; and
a lubricant in an amount less than 5 weight percent on a
total solids basis.

46. An aqueous sizing composition for glass fibers for
reinforcing organic composite materials, comprising:
(a) from about 3 to about 9 weight percent
hypophosphorus acid on a total solids basis;
(b) from about 25 to about 40 weight percent
aminosilane on a total solids basis, wherein the aminosilane
comprises a primary amine; and
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(c) from about 49 to about 70 weight percent film-former
on a total solids basis.

App. Br. 20, 26 (Claims Appendix) (emphasis added and spacing altered).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered June 14, 2018:3
I. Claims 1, 4–8, 11–17, 19–22, 24–35, 37, 39–44, 46, and 47
under 35 U.S.C. § 103(a) as unpatentable over Augier4 in view of Schell5;
II. Claims 9 and 36 under 35 U.S.C. § 103(a) as unpatentable over
Augier in view of Schell and Hansen6; and
III. Claim 45 under 35 U.S.C. § 103(a) as unpatentable over Augier
in view of Schell and Puckett7.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s timely contentions,8 we affirm the Examiner’s rejections

3 Although the Examiner rejects claims 28–33 on the ground of nonstatutory
obviousness-type double patenting over certain claims of copending U.S.
patent application serial number 13/075,640 (Final Act. 3–4), patent
application serial number 13/075,640 was abandoned, rendering the
obviousness-type double patenting rejection moot.
4 Augier et al., US 5,736,246, issued April 7, 1998 (“Augier”).
5 Schell et al., US 6,207,737 B1, issued March 27, 2001 (“Schell”).
6 Hansen et al., US 2009/0227706 A1, published September 10, 2009
(“Hansen”).
7 Puckett, US 2005/0100734 A1, published May 12, 2005.
8 We do not consider any new argument Appellant presents in the Reply
Brief that Appellant could have raised in the Appeal Brief. 37 C.F.R.
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of claims 1, 4–9, 11–14, 16, 17, 19–22, 24–37, and 39–47 under 35 U.S.C. §
103(a), for the reasons set forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based upon the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).
Rejection I: claims 1, 4–8, 11–17, 19–22, 24–35, 37, 39–44, 46, and 47
under 35 U.S.C. § 103(a) as unpatentable over Augier in view of Schell
Appellant presents arguments directed to independent claims 1 and
21, which Appellant argues together, and directed to independent claim 46.
Appeal Br. 4–15. We select claim 1 as representative of claims 1, 4–8, 11–
17, 19–22, 24–35, 37, 39–44, and decide the appeal as to claims 1, 4–8, 11–
17, 19–22, 24–35, 37, 39–44 based on claim 1 alone, and select independent
claim 46 as representative of claims 46 and 47, and decide the appeal as to
claims 46 and 47 based on claim 46. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1, 4–8, 11–17, 19–22, 24–35, 37, 39–44
Augier discloses a sizing composition used for “coating glass strands
for reinforcement of organic and/or inorganic materials and providing
corrosion resistance thereto.” Augier col. 2, ll. 39–54. Augier discloses that

§ 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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the glass strands are “preferably composed of filaments having a diameter of
between 5 and 24 µm.” Augier col. 3, ll. 35–41, col. 4, ll. 36–45.
Augier discloses that the sizing composition comprises a silane of the
formula Si(R1)(R2)(R3)(R4) in which R1 and R2 are alkoxy groups and R3 and
R4 can be hydrocarbon radicals optionally containing one or more nitrogens.
Augier col. 2, ll. 39–52. Augier discloses that that the sizing composition
“may include one or more other silanes generally acting as coupling agents,
especially one or more silanes commonly used in sizes.” Augier col. 6, ll.
50–54. Augier discloses that the maximum amount of all silanes in the
sizing composition should not exceed 25% by weight of a dry extract of the
composition. Augier col. 6, ll. 62–64. Augier discloses that the sizing
composition can include other components commonly used in sizing
compositions, such as film forming agents, in an amount preferably less than
30% by weight of a dry extract of the composition. Augier col. 8, ll. 12–18.
Augier discloses that the sizing composition can also include at least
one phosphonic acid or phosphonic acid derivative (claims 1 and 4), and
discloses that when glass strands coated with the composition are intended
for reinforcement of an alkaline material such as cement, the sizing
composition includes a silane as described above, optionally an adhesive
having an one or more epoxy functional groups, and at least one phosphonic
acid or phosphonic acid derivative. Augier col. 8, ll. 42–48. Augier
discloses that:
The alkali-resistant glass strands coated with the size according
to the present invention are thus advantageous not only for the
direct reinforcement of corrosive inorganic materials, including
alkaline materials such as cement, but also, and even more
surprisingly and advantageously, for the reinforcement of
organic materials which may or may not be intended to be
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subjected to high stresses in a corrosive medium (for example
in cement).
Augier col. 5, ll. 3–10 (emphasis added).
Augier discloses that the amount of phosphonic acid included in the
sizing composition “is generally between 0 and 40% by weight of the dry
extract of the composition and preferably, when the glass strands are
intended to be combined directly with an alkaline inorganic material such as
cement, between 10 and 40% by weight of the dry extract of the
composition.” Augier col. 8, ll. 6–11.
The Examiner finds that although Augier discloses that the sizing
composition can include “other silanes generally acting as coupling agents,”
Augier does not disclose that such additional silanes include a primary
amine, and the Examiner relies on Schell’s disclosure of coupling agents
having primary amines. Final Act. 5 (emphasis omitted). More specifically,
Schell discloses a sizing composition for glass fibers used to reinforce
thermoplastic materials such as polyolefins. Schell col. 1, ll. 15–18. Schell
discloses that the sizing composition comprises a coupling agent, a film-
forming material, and a stabilizer. Schell col. 2, ll. 10–17. Schell discloses
that the film-forming material is generally present in the sizing composition
in an amount ranging from about 50 weight percent to about 90 weight
percent based on the total solids content of the sizing composition. Schell
col. 6, ll. 21–26. Schell discloses that suitable coupling agents include
functional organo silanes, such as 3-aminopropyldimethylethoxysilane,
gamma-aminopropyltriethoxysilane, gamma-aminopropyltrimethoxysilane,
beta-aminoethyltriethoxysilane, and N-beta-
aminoethylaminopropyltrimethoxysilane, which include primary amine
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groups. Schell col. 4, ll. 47–49, col. 5, ll. 7–12.
Based on these disclosures in Augier and Schell, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of Appellant’s invention to substitute a functional organo silane
coupling agent as disclosed in Schell for the silane coupling agent disclosed
in Augier, because both silanes are taught to be useful as coupling agents in
sizing compositions for coating glass strands used to reinforce organic
composite materials. Final Act. 6.
Appellant argues that one of ordinary skill in the art would not have
combined the “disparate teachings” of Augier and Schell because Augier is
“directed only to highly alkaline inorganic composites,” while Shell is
directed to “organic composites.” Appeal Br. 7. Appellant argues that
“Augier’s use of at least one phosphonic acid or phosphonic acid derivative
occurs only in an embodiment where the glass fibers are reinforcing an
inorganic material, namely, cement, which is alkaline.” Appeal Br. 7 (citing
Augier col. 7, ll. 42–48). Appellant argues that “the compositions of Augier
that comprise a phosphonic acid or a phosphonic acid derivative are taught
as being useful for alkaline inorganic composites, but not for organic
composites, which generally do not suffer from excess alkalinity.” Id. at 8
(citing Augier col. 13, ll. 25–54 (Example 12)). Appellant argues that
“Schell describes polyolefin polymer composites,” and “it would have been
clear to one of ordinary skill from the teachings of Augier that the
phosphonic acid or a phosphonic acid derivative is present to neutralize the
alkaline conditions in inorganic materials such as cement, and would not
serve the same purpose in the organic composites of Schell.” Appeal Br. 8
(citing Schell Abstr.). Appellant argues that one of ordinary skill in the art,
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therefore, would not have had a reasonable expectation of success for the
proposed combination of Augier and Schell, which “are directed to non-
analogous uses.” Appeal Br. 11.
As discussed above, however, Augier explicitly discloses that glass
strands coated with the sizing composition of Augier’s invention can
“surprisingly and advantageously” be used to reinforce organic materials.
Augier col. 5, ll. 3–10. And contrary to Appellant’s arguments, Augier’s
disclosure of including at least one phosphonic acid or phosphonic acid
derivative in the sizing composition described in the reference is not limited
to only an embodiment in which glass fibers coated with such a sizing
composition are used to reinforce alkaline inorganic materials, such as
cement. Rather, as discussed above, Augier more generally discloses that
the sizing composition described in the reference can include at least one
phosphonic acid or phosphonic acid derivative (claims 1 and 4), and this
general disclosure does not specify any limitation as to the particular type of
composite materials that can be successfully reinforced with glass fibers
coated with such a sizing composition.
In addition, as also discussed above, Augier discloses that the amount
of phosphonic acid included in the sizing composition “is generally between
0 and 40% by weight of the dry extract of the composition and preferably,
when the glass strands are intended to be combined directly with an alkaline
inorganic material such as cement, between 10 and 40% by weight of the dry
extract of the composition.” Augier col. 8, ll. 6–11. Augier thus
differentiates between using the sizing composition described in the
reference to coat glass strands for reinforcement of alkaline inorganic
material such as cement, from using the sizing composition to coat glass
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strands for reinforcement of other materials, by indicating that differing
amounts of phosphonic acid should be included in sizing compositions used
for different applications. In so doing, Augier implicitly indicates that
phosphonic acid can be included in sizing compositions used to coat glass
strands for reinforcement of materials other than alkaline inorganic
materials. In other words, Augier’s explicit disclosure of including a
different amount of phosphonic acid in sizing compositions used to coat
glass strands for reinforcement of alkaline inorganic materials (10 and 40%)
than for inclusion in sizing compositions generally (0 and 40%), reasonably
would have indicated to one of ordinary skill in the art that use of Augier’s
sizing composition including phosphonic acid is not limited to applications
in which the composition is used to coat glass strands for reinforcement of
alkaline inorganic materials.
Augier’s disclosures as a whole, therefore, would have indicated to
one of ordinary skill in the art that the sizing composition of Augier’s
invention comprising a phosphonic acid could be used to coat glass strands
for reinforcement of organic materials. In view of Schell’s disclosure of
functional organo silanes suitable for use as coupling agents in a sizing
composition applied to glass fibers for reinforcing thermoplastics such as
polyolefins (organic materials), one of ordinary skill in the art reasonably
would have been led to use a functional organo silane coupling agent as
disclosed in Schell as the silane coupling agent in Augier’s sizing
composition, with a reasonable expectation of successfully using Augier’s
modified sizing composition to coat glass strands for reinforcement of
organic materials. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a
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patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”); In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require
absolute predictability of success . . . all that is required is a reasonable
expectation of success” (emphasis omitted) (citing In re O’Farrell, 853 F.2d
894, 903‒04 (Fed. Cir. 1988))).
Appellant argues that “one [of] ordinary skill in the art would not have
combined Augier and Schell” because the Examiner’s “proposed
combination of Augier and Schell presents incompatibilities of chemicals of
Augier with chemicals of Schell.” Appeal Br. 11. Appellant argues that
“Augier’s compositions comprise a large amount of adhesive having an
epoxy or a polyester functionality,” and one of ordinary skill in the art would
have expected that the primary amines disclosed in Schell could react with
such epoxy and polyester groups to form amino-alcohols and amides, instead
of forming an acid-amine component as recited in claim 1. Appeal Br. 11–
12. Appellant argues that one of ordinary skill in the art also would have
understood that phosphonic acid is present in Augier’s sizing composition to
neutralize alkaline conditions in cement, and if the basic primary amines
disclosed in Schell were added to Augier’s inorganic cement composite
compositions, the primary amines would decrease the neutralizing ability of
Augier’s composition, rendering it unsuitable for the intended purpose of
neutralizing alkaline inorganic composite materials. Appeal Br. 12.
As discussed above, however, Augier’s disclosures as a whole would
have indicated to one of ordinary skill in the art that suitable applications for
Augier’s sizing composition are not limited to reinforcement of alkaline
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inorganic composite materials. Rather, Augier explicitly discloses that
Augier’s sizing composition can be used to coat glass strands for
reinforcement of organic materials. Contrary to Appellant’s arguments, the
intended purpose of Augier’s sizing composition is, therefore, not limited to
neutralizing alkaline inorganic composite materials. We find no evidence on
the record before us establishing that adding primary amines as disclosed in
Schell to Augier’s sizing composition would render the composition
unsuitable for its intended purpose of coating glass strands used to reinforce
organic materials.
Furthermore, Appellant does not provide any evidence to support the
asserted chemical incompatibilities between the primary amines disclosed in
Schell and the components of Augier’s sizing composition, including any
evidence to support the assertion that one of ordinary skill in the art would
have expected that the primary amines disclosed in Schell could react with
such epoxy and polyester groups to form amino-alcohols and amides.
Appellant’s unsupported assertions do not constitute evidence that is
necessary to establish the asserted chemical incompatibilities. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to
follow from common experience is just attorney argument and not the kind
of factual evidence that is required to rebut a prima facie case of
obviousness.”); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1043 (Fed. Cir. 2017) (“Attorney argument is not evidence” and cannot
rebut other admitted evidence.); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney’s argument in a brief cannot take the place of evidence.”);
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument in the brief does
not take the place of evidence in the record.”).
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Appellant argues that Augier does not disclose a molar ratio of
phosphorus-containing acid to amine of between about 0.1 and about 1 as
recited in claim 1. Appeal Br. 13–14. Appellant argues that Augier instead
discloses that the maximum amount of silanes in Augier’s sizing
composition should not exceed 25 % by weight, and the amount of
phosphonic acid included in the composition is generally between 0 and 40
% by weight. Id. at 14. Appellant argues that these disclosures “teach[] an
infinite number of ratios of silane to phosphonic acid” because “if one takes
the highest weight percent of phosphonic acid, 40 wt %, and divides by the
lowest weight percent of amine, 0 wt. %, the ratio is infinite, since one
cannot divide by zero” and “if one takes the lowest weight percent of
phosphonic acid, 0 wt. %, and divides by the highest weight percent of
amine, 25 wt. %, the ratio is zero.” Id.
As the Examiner explains (Ans. 21), however, “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.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955). Thus, “[n]ormally, it is to be
expected that a change in temperature, or in concentration, or in both, would
be an unpatentable modification.” Id. at 456; see also Peterson, 315 F.3d at
1330 (“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.”).
One of ordinary skill in the art seeking to produce a sizing
composition as disclosed in Augier modified as suggested by Schell would
have determined appropriate amounts of phosphonic acid and primary
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amine-containing functional organo silane coupling agent to include in the
composition, and would have arrived at optimal amounts, such as amounts
that would result in a molar ratio of phosphonic acid to primary amine of
between about 0.1 and about 1 as recited in claim 1, through nothing more
than routine experimentation. Aller, 220 F.2d at 456. On the record before
us, Appellant does not argue, much less demonstrate, the criticality of the
molar ratio range recited in claim 1, and Appellant’s argument that Augier
does not disclose the molar ratio of phosphorus-containing acid to amine
recited in claim 1 is, therefore, unpersuasive of reversible error. Woodruff,
919 F.2d at 1578; Jung, 637 F.3d at 1365.
Appellant argues that Schell teaches away from independent claim 1
“by expressly using the conjugate base salts derived from phosphorus-
containing acids instead of using the phosphorus-containing acids in their
acidic form” as recited in claim 1. Appeal Br. 8 (citing Shell col. 2, ll. 17–
43).
Although Schell may disclose including conjugate base salts derived
from phosphorus-containing acids in the sizing compositions described in
the reference, rather than phosphorus-containing acids in their acidic form as
recited in claim 1, “mere disclosure of alternative designs does not teach
away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather,
teaching away requires “clear discouragement” from implementing a
technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017);
see also Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017)
(“A reference that ‘merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into’ the claimed invention does not teach away” (quoting
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Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013).)).
We find no disclosure in Schell that criticizes, discredits, or otherwise
would have discouraged one of ordinary skill in the art from using a
phosphorous-containing acid in a sizing composition for a fiber glass strand
as recited in claim 1, and Appellant does not identify any such disclosure in
Schell. Accordingly, contrary to Appellant’s arguments, Schell does not
teach away from the sizing composition recited in claim 1.
Appellant argues that the Declaration of inventor Jacob Cornelis Dijt
filed December 29, 2014 includes experimental examples that “demonstrate
unexpected benefits of embodiments of the claimed sizing compositions
(Compositions A, B, and F–K) with respect to sizing compositions that
employ the conjugate base form of the phosphorus-containing acid
(Compositions D, E, and L–Q).” Appeal Br. 12–13 (citing Dijt Declaration
pp. 7 and 8). Appellant argues that “Example 4 of the present application
[also] demonstrates unexpected benefits of embodiments of the claimed
sizing compositions (Compositions A and B) when compared with sizing
compositions that employ the conjugate base form of the phosphorus-
containing acid (Compositions D and E).” Appeal Br. 12–13 (citing Spec.
pg. 15, l. 27–pg. 27, l. 25).
It is well-established, however, that “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). As discussed above, the sizing
composition disclosed in Augier includes phosphonic acid, rather than a
conjugate base form of a phosphorus-containing acid. The relied-upon
examples described in the Dijt Declaration comparing “claimed sizing
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compositions” to compositions that included a conjugate base form of a
phosphorus-containing acid, therefore, do not provide a comparison between
the sizing composition recited in claim 1 and the sizing composition of the
closest prior art, Augier. Accordingly, the relied-upon comparison set forth
in the Dijt Declaration does not support Appellant’s assertion of unexpected
results. Baxter, 952 F.2d at 392.
Considering the totality of the evidence relied-upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner’s conclusion
of obviousness. We, accordingly, sustain the Examiner’s rejection of claims
1, 4–8, 11–17, 19–22, 24–35, 37, and 39–44 under 35 U.S.C. § 103(a).
Claims 46 and 47
Independent claim 46 recites an aqueous sizing composition for glass
fibers for reinforcing organic composite materials comprising in part, from
about 25 to about 40 weight percent aminosilane on a total solids basis, and
from about 49 to about 70 weight percent film-former on a total solids basis.
Appellant argues that the Examiner relies on Schell’s disclosure “that
the film forming component is generally present” in Schell’s sizing
composition in an amount of from 50 to about 90 weight” percent, while
ignoring Augier’s explicit teaching of including a film former in Augier’s
sizing composition in an amount of preferably less than 30 % by weight,
which Appellant argues teaches away from using more than 30 % by weight
film former in a sizing composition. Appeal Br. 14–15.
A range may be disclosed by multiple prior art references, however,
where the various values disclosed in the prior art references are generally
directed to the same subject matter. Iron Grip Barbell Co. v. USA Sports,
Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
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As discussed above, Augier and Schell both disclose sizing
compositions for glass strands used to reinforce organic materials. Augier
discloses that the sizing composition described in the reference can include
components commonly used in sizing compositions, such as film forming
agents, in an amount preferably less than 30% by weight of a dry extract of
the composition. Augier col. 8, ll. 12–18. Schell discloses that the sizing
composition described in the reference includes a film-forming material
generally present in an amount ranging from about 50 weight percent to
about 90 weight percent based on the total solids content of the sizing
composition. Schell col. 6, ll. 21–26.
Augier and Shell thus disclose a weight range of film forming
material suitable for use in sizing compositions for glass strands used to
reinforce organic materials that encompasses the range of about 49 to about
70 weight percent recited in claim 46, rendering the recited range prima
facie obvious. Peterson, 315 F.3d at 1329–30 (“Selecting a narrow range
from within a somewhat broader range disclosed in a prior art reference is no
less obvious than identifying a range that simply overlaps a disclosed range.
In fact, when, as here, the claimed ranges are completely encompassed by
the prior art, the conclusion is even more compelling than in cases of mere
overlap.”). On the record before us, Appellant does not argue, much less
demonstrate, the criticality of the film former weight range recited in claim
46. Woodruff, 919 F.2d at 1578.
Appellant argues that “[a] person of ordinary skill, upon reading the
explicit teaching of Augier that the total amount of silanes [included in
Augier’s sizing composition] should not exceed 25 % by weight would not
arrive at the instantly claimed range of from about 25 to about 40 weight on
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a total solids basis.” Appeal Br. 15.
As discussed above, however, Augier discloses that the sizing
composition of Augier’s invention comprises an aminosilane by indicating
that the composition comprises a silane of the formula Si(R1)(R2)(R3)(R4) in
which R3 and R4 can be hydrocarbon radicals optionally containing one or
more nitrogens. Augier col. 2, ll. 39–52. As also discussed above, the
Examiner proposes substituting a functional organo silane coupling agent
including a primary amine as disclosed in Schell for the silane coupling
agent disclosed in Augier. Augier discloses that the maximum amount of all
silanes in Augier’s sizing composition, including silanes of the general
formula set forth above and the “other silanes” used as coupling agents—
both of which would be aminosilanes in the proposed combination of Augier
and Schell—should not exceed 25% by weight of a dry extract of the
composition. Augier col. 6, ll. 62–64.
Use of the term “about” in claim 46 to describe the lower limit of the
aminosilane weight range indicates that the lower limit can be applied
flexibly, allowing for an aminosilane weight percentage of somewhat below
25%. Thus, the range of less than 25% by weight aminosilanes suggested by
the combined disclosures of Augier and Schell overlaps the range of about
25 to about 40 weight percent aminosilane recited in claim 46, rendering the
recited range prima facie obvious. Peterson, 315 F.3d at 1329. On the
record before us, Appellant does not argue, much less demonstrate, the
criticality of the aminosilane weight range recited in claim 46. Woodruff,
919 F.2d at 1578.
We, accordingly, sustain the Examiner’s rejection of claims 46 and 47
under 35 U.S.C. § 103(a).
Appeal 2018-008500
Application 12/267,963

18
Rejection II: claims 9 and 36 under 35 U.S.C. § 103(a)
as unpatentable over Augier in view of Schell and Hansen
Appellant argues claims 9 and 36 together. Appeal Br. 17–18. We,
accordingly, select independent claim 1 as representative, and decide the
appeal as to claims 9 and 36 based on claim 36. 37 C.F.R. § 41.37(c)(1)(iv).
To address claim 36, the Examiner indicates that “Augier in view of
Schell is relied upon as set forth above in the ejection of claim 1.” Final
Act. 13. The Examiner finds, however, that “said combination does not
suggest that the phosphorus containing acid is phosphinic acid,” and the
Examiner relies on Hansen for suggesting inclusion of phosphinic acid in a
sizing agent composition. Id.
Hansen discloses an aqueous binder composition for bonding mineral
fibers, such as glass fibers. Hansen ¶¶ 5, 49. Hansen discloses that the
composition can be used in applications typical for sizing agents. Hansen ¶
54. Hansen discloses that the composition comprises a binder component
obtainable by reacting at least one alkanolamine with at least one carboxylic
anhydride, and at least one hydrolytic stability-improving agent. Hansen ¶¶
13–15. Hansen discloses that the composition may also include
conventional additives such as phosphinic acid. Hansen ¶¶ 40, 41.
Based on these disclosures in Hansen, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention to substitute phosphinic acid as disclosed in Hansen
for the phosphonic acid disclosed in Augier, because phosphinic acid and
phosphonic acid are both taught to be useful in sizing compositions for
coating glass strands. Final Act. 13.
Appellant argues that claims 9 and 36 are patentable over Augier,
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Application 12/267,963

19
Schell, and Hansen for the same reasons that claim 1 is patentable over
Augier and Schell (discussed above) because Hansen does not cure the
deficiencies of Augier and Schell, and because the “unexpected results
described above . . . further support that non-obviousness of claims 9 and 36
over the combination of Augier, Schell, and Hansen.” Appeal Br. 17.
Because Appellant’s arguments for claim 1 do not identify reversible error in
the Examiner’s rejection of claim 1 for the reasons discussed above,
Appellant’s arguments as to this rejection also do not identify reversible
error in the Examiner’s rejection of claims 9 and 36.
Appellant also argues that “a person of ordinary skill would find no
teaching, suggestion, or motivation or other rational underpinning from
Augier and/or Shell to add the phosphinic acid of Hansen to the composition
of the purported Augier/Shell combination.” Appeal Br. 18. Appellant
argues that Hansen teaches an aqueous binder composition comprising the
water-soluble reaction product of an alkanolamine with a carboxylic
anhydride. Id. Appellant argues that the alkanolamines are not primary
amines, but instead are secondary or tertiary amines, which are not available
to associate with phosphinic acid because “they have already been reacted
with a carboxylic anhydride.” Id.
As discussed above, however, the Examiner’s proposed combination
of Hansen with Augier and Shell does not involve adding the binder
component of Hansen’s composition, which Hansen discloses is obtainable
by reacting at least one alkanolamine with at least one carboxylic anhydride,
to the sizing composition of Augier as modified by Shell. Rather, the
Examiner proposes substituting the phosphinic acid sizing composition
additive disclosed in Hansen for the phosphonic acid included in Augier’s
Appeal 2018-008500
Application 12/267,963

20
sizing composition as modified by Schell. Thus, Appellant’s assertion that
the alkanolamines in Hansen’s binder component are not primary amines,
and are not available to associate with phosphinic acid, does not address the
basis for the Examiner’s proposed combination of Hansen with Augier and
Schell, and, therefore, does not identify reversible error in the Examiner’s
rationale for the proposed combination. Jung, 637 F.3d at 1365.
We, accordingly, sustain the Examiner’s rejection of claims 9 and 36
under 35 U.S.C. § 103(a).
Rejection III: claim 45 under 35 U.S.C. § 103(a) as unpatentable over
Augier in view of Schell and Puckett
To address this rejection, Appellant relies on the arguments Appellant
presents for claim 1 (discussed above), and argues that the additional
reference applied in this rejection (Puckett) fails to cure the deficiencies of
Augier and Schell. Appeal Br. 18. Because Appellant’s arguments for
claim 1 do not identify reversible error in the Examiner’s rejection of claim
1 for the reasons discussed above, Appellant’s arguments as to this rejection
also do not identify reversible error in the Examiner’s rejection of claim 45,
which we accordingly sustain.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 4–8, 11–
17, 19–22,
24–35, 37,
39–44, 46, 47
103(a) Augier, Schell 1, 4–8, 11–
17, 19–22,
24–35, 37,
39–44, 46, 47

9, 36 103(a) Augier, Schell,
Hansen
9, 36
Appeal 2018-008500
Application 12/267,963

21
Claims

35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
45 103(a) Augier, Schell,
Puckett
45
Overall
Outcome
1, 4–9, 11–
14, 16, 17,
19–22, 24–
37, 39–47

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