Kurt E. Heikkila

Patent Trials and Appeals Board

Aug 5, 2019

12278633 - (D) (P.T.A.B. Aug. 5, 2019)

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.
12/278,633 01/21/2009 Kurt E. Heikkila 0592.000003US01 3394
26813 7590 08/05/2019
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
08/05/2019 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KURT E. HEIKKILA
____________________

Appeal 2017-005107
Application 12/278,633
Technology Center 1700
____________________

Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.

OGDEN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 123–135, 137–158, 161, 164, and 165 in the above-
identified application.3 Counsel for Appellant appeared for a hearing on
April 16, 2019.4 We affirm.

1 e appeal record includes the following: Specification, Aug. 7, 2008
(“Spec.”); Final Office Action, June 1, 2016 (“Final Action”); Appeal Brief,
Oct. 31, 2016 (“Appeal Br.”); Examiner’s Answer, Dec. 13, 2016
(“Answer”); and Reply Brief, Feb. 13, 2017 (“Reply Br.”).
2 According to the Appeal Brief, the real party in interest is Tundra
Composites, LLC. Appeal Br. 3.
3 e Examiner also objects, on formal grounds, to pending claims 159, 160,
162, and 163, which are not the subject of this appeal. Final Action 8–9.
4 See Hearing Transcript, entered July 10, 2019 (“Tr.”).
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BACKGROUND
Appellant’s invention relates to a metal–polymer composite. Spec. 1:
3–4. According to Appellant, the composite material “behaves as a
viscoelastic material, with stress and strain characteristics like the
thermoplastic polymer” component, because of “a greater freedom of
movement of the particulate within the polymer phase compared to the
composite without an interfacial modifier,” which “results from the
interfacial modifier not being reactively bonded to the polymer phase.”
Appeal Br. 5. e Specification states that these non-reacted ends “reduce
the friction between particles preventing gouging and allowing for greater
freedom of movement between particles.” Id. at 34. During the hearing,
Appellant argued that a unique characteristic of this material is that “as you
stretch the material it has two peaks of stress.” Tr. 5:23–6:2.
Independent claim 123, which we reproduce below, is representative:
123. A metal and polymer viscoelastic composite comprising:
(a) metal particulate comprising metal particles having a
particle size greater than about 10 microns, the metal particulate
present in an amount of about 40 vol-% to about 96 vol-% of
the composite, and the particulate comprising an exterior
coating of an interfacial modifier on the metal particulate; and
(b) a thermoplastic polymer phase present in an amount
of about 4 vol-% to about 60 vol-% of the composite;
wherein the polymer phase, prior to being incorporated
into the viscoelastic composite and when subject to a deforming
force to an initiation of failure, exhibits a characteristic stress
and strain curve with a yield stress maximum A, a lower yield
stress minimum B, and a second yield stress maximum C, with
the strain at C being greater than the strain at B, and the strain
at B being greater than the strain at A;
wherein the viscoelastic composite, when subject to a
deforming force to an initiation of failure, exhibits a
characteristic stress and strain curve with a yield stress
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maximum A, a lower yield stress minimum B, and a second
yield stress maximum C, with the strain at C being greater than
the strain at B, and the strain at B being greater than the strain
at A; and
wherein the interfacial modifier coating on the metal
particulate allows for greater freedom of movement between the
particulate within the polymer phase compared to the same
composite without the metal particulate having an exterior
coating comprising the interfacial modifier, when measured
under the same conditions.
Appeal Br. 37 (emphasis of key phrases added). Independent claims 133,
139, and 140 contain similar limitations. Id. at 39–42. Claims 124–132, 142–
145, and 158–160 depend directly or indirectly from claim 123; claims 134,
135, 137, 138, 146–149, and 161–163 depend directly or indirectly from
claim 133, claims 150–153 and 164 depend directly or indirectly from claim
139; and claims 141, 154–157, and 165 depend directly or indirectly from
claim 140. Appeal Br. 39–41.
e Examiner’s grounds of rejection are as follows:
Rejection 1: claims 123–135 and 137–157 under 35 U.S.C. § 103(a)
as being unpatentable over Schnelle5 in view of Ohkawa6 and Lewchuk.7 Id.
at 2–5.
Rejection 2: claims 123–131, 133–135, 137–158, and 161 under 35
U.S.C. § 103(a) as being unpatentable over Bray8 in view of Ohkawa. Id. at
5–7.

5 Schnelle et al., US 5,373,047 (issued Dec. 13, 1994) (“Schnelle”).
6 Ohkawa et al., US 4,891,399 (issued Jan. 2, 1990) (“Ohkawa”).
7 Lewchuk et al., US 3,784,655 (issued Jan. 8, 1974) (“Lewchuk”).
8 Bray et al, US 6,048,379 (issued Apr. 11, 2000) (“Bray”).
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Rejection 3: claims 164 and 165 under 35 U.S.C. § 103(a) as being
unpatentable over Bray in view of Ohkawa and Belanger.9 Id. at 8.
DISCUSSION
A. Construction of interfacial modifier
As part of our analysis, we will interpret the term interfacial modifier.
When interpreting a claim term, we apply “the 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 whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Appellant argues that we should interpret interfacial modifier as an
additive that “prevents reactive bonding between a particle and a polymer.”
Reply Br. 6. However, this construction of the term is too narrow in light of
the Specification.
e Specification states, “An interfacial modifier is an organic
material that provides an exterior coating on the particulate promoting the
close association of polymer and particulate.” Spec. 10:17–19. Its purposes
include “to improve the association of the particulate with the polymer,” id.
at 4:22–24, “to promote composite formation,” id. at 7:8–10, and “to
overcome the forces that prevent the matrix from forming a substantially
continuous phase of the composite,” id. at 10:14–16.

9 Bélanger et al., US 5,237,930 (issued Aug. 24, 1993) (“Bélanger”).
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e Specification also states that an interfacial modifier may “fall into
broad categories including, for example, stearic acid derivatives, silane
compounds, titanate compounds, zirconate compounds, [and] aluminate
compounds,” and the choice “is dictated by metal particulate, polymer, and
application.” Id. at 33:10–13. An interfacial modifier, as that term appears in
the Specification, need not increase the melt flow index of the composite
material. See id. at 42:11, 43:7–8 (identifying SIA0591.010 as an interfacial
modifier, and stating that its addition to the composite, while increasing the
tensile elongation and maximum stress, did not increase the melt flow
index). e interfacial modifier may contain a group that is “chemically
bonded to the polymer phase or as desired to remain unreactive if non-
bonded interfacial[] modif[ication] can be applied.” Id. at 34:29–30.
us, while the Specification teaches a non-reactive interfacial
modifier as one embodiment, it also teaches that interfacial modifiers can
form a covalent bond with the polymer matrix. In light of these passages in
the Specification, the broadest reasonable interpretation of the term
interfacial modifier encompasses any particle coating that promotes the close
association of polymer and particle.
B. Rejection 1 (Schnelle, Ohkawa, and Lewchuk)
With respect to the first ground of rejection, Appellant argues the
claims as a group, except for specific arguments with respect to dependent
claim 141. See Appeal Br. 16–30. erefore, under 37 C.F.R.

10 “SIA0591.0” refers to N-(2-aminoethyl)-3-aminopropyl-trimethoxy-
silane. Spec. 44:16.
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§ 41.37(c)(1)(iv), we limit our discussion to claims 123 and 141. Claims
123–135, 137–140, and 142–157 fall with claim 123.
e Examiner finds that Schnelle discloses a metal–polymer
composite with the composition ranges recited in claim 123. Final Action 2.
According to the Examiner, Schnelle discloses each of the limitations of
claim 123 except that it “fails to disclose (i) [that] the adhesion promoter
allows for greater freedom of movement between the particulate or (ii) a
stress–strain curve of the mixture that behaves with a yield and draw
followed by fracture like claimed.” Id. at 3. However, the Examiner finds
that Ohkawa and Lewchuk teach limitations (i) and (ii), respectively, and
provides a rationale for why a person of ordinary skill in the art would have
combined the references as claimed. See id. at 3–4.
In response to the rejection, Appellant argues (1) that Ohkawa’s water
repellent agent does not function as an “interfacial modifier” providing
greater freedom of movement between the particles, (2) that Schnelle
teaches away from using Ohkawa’s water repellent agent, (3) that the
proposed combination of Ohkawa and Schnelle would not have resulted in a
material with the recited properties, and (4) that the recited art is not
analogous to the claimed invention. Appeal Br. 17. For the reasons discussed
below, we do not find these arguments persuasive of reversible error.
Whether the references teach an “interfacial modifier”
that allows for “greater freedom of movement”
Claim 123 requires that “the interfacial modifier coating on the metal
particulate allows for greater freedom of movement between the particulate
within the polymer phase compared to the same composite without the metal
particulate having an exterior coating comprising the interfacial modifier,
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when measured under the same conditions.” Appeal Br. 37. e Examiner
finds that Schnelle discloses an interfacial modifier in the form of an
“adhesion promoter.” Final Action 2 (citing Schnelle, Abstract).11 e
Examiner also finds that Ohkawa teaches a “metallic filler having a surface
coated with a water repellent agent (i.e., interfacial modifier) such as silane
and titanate coupling agents.” Id. at 3 (citing Ohkawa, Abstract). According
to the Examiner, Ohkawa teaches that these coupling agents provide “good
moldability, good molded appearance, high mechanical properties,
dimensional stability, and resistance against rusting.” Id. (citing Ohkawa
1:40–2:60).
Ohkawa teaches that
[w]hen the amount of the water repellent agent is too small, no
sufficient coupling effect can be exhibited between the surface
of the filler and the matrix phase so that the resultant molding
composition would be poor in the moldability. When the
amount thereof is too large, on the other hand, a phenomenon of
slipping may be caused due to the excessively strong effect of
lubrication between the filler surface and the matrix phase
leading to disadvantages . . . .
Ohkawa 8:10–18. e Examiner finds that this passage “strongly suggests
that the water repellent agent is not reacted with [the polymer] matrix
because there is lubrication between the filler surface and matrix phase (i.e.,
not ‘excessive lubrication’) when used in lower amounts like claimed and
therefore [the composition] provides the claimed ‘greater freedom of
movement.’” Answer 3 (citing Ohkawa 8:14–26).

11 Schnelle specifically mentions “adhesion promoters of the commercial
amino or epoxy silane type.” Schnelle 2:21–22.
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Because Ohkawa teaches that the coupling agents “are added to
metallic filler in a polymer matrix in order to improve moldability,” the
Examiner determines that “it would have been obvious to one of ordinary
skill in the art to utilize a coupling agent . . . that improves moldability, i.e.,
improved freedom of movement between particles.” Id.
Appellant argues that the cited references do not teach an “interfacial
modifier,” and particularly not one that allows for “greater freedom of
movement” as claim 123 recites. Appeal Br. 19. Rather, Appellant argues
that Ohkawa, like Schnelle, only discloses “a reactive coupling agent that
would result in a ‘relatively hard and inextensible metal polymer
composite.” Appeal Br. 19 (citing Felska Decl.12 9). According to Appellant,
“[t]his hardness is the result of the reactive bonding among particle to
particle and particle to polymer.” Id.
Even if Schnelle and Ohkawa are limited to teaching reactive coupling
agents, we disagree that the references fail to disclose interfacial modifiers.
Our interpretation of the term interfacial modifier, discussed above in part A,
would not exclude reactive bonding between the particles and the polymer
matrix. us, we agree with the Examiner’s determination that Schnelle and
Ohkawa both teach interfacial modifiers according to the broadest
reasonable interpretation of that term.
us, the key issue is whether the addition of Ohkawa’s interfacial
modifiers increases the freedom of movement between the particles. On this
point, Appellant disagrees with the Examiner’s finding that Ohkawa strongly
suggests freedom of movement (i.e., lubrication) when using an interfacial

12 Declaration of Wade Felska, Dec. 14, 2012 (“Felska Decl.”).
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modifier at an operative concentration. Id. at 19–20 (citing Felska Decl. 9).
According to Appellant, Ohkawa simply teaches that “using an amount of
water repellant agent in excess of that needed to reactively couple the
particle to polymer results in a failed material.” Id. at 20 (citing Ohkawa
8:10–14 (“When the amount of the water repellent agent is too small, no
sufficient coupling effect can be exhibited between the surface of the filler
and the matrix phase so that the resultant molding composition would be
poor in moldability.”) (emphasis omitted)).
We do not find this argument persuasive. To the extent that the use of
too much coupling agent results in a failed material, it is because there is
“excessively strong . . . lubrication between the filler surface and the matrix
phase.” Ohkawa 8:16–17. We agree with the Examiner that this clearly
suggests that the coupling agent causes a lubrication effect, and that at lower
concentrations this effect is present, but not excessive. See Final Action 11
( e passage in Ohkawa “suggests that there is ‘greater freedom of
movement’ to some degree when the interfacial modifier is added.”).
Moreover, we agree with the Examiner that Ohkawa’s reference to
“coupling,” and a “sufficient coupling effect” do not imply that there must be
any reactive bonding between the particles and the polymer matrix. See
Answer 13–14. e evidence on this record as a whole suggests the contrary.
e passage in question states that “sufficient coupling effect” is needed to
prevent the resultant molding composition from having “poor . . .
moldability.” See Ohkawa 8:10–14. Elsewhere, Ohkawa teaches that the
water repellent agent leads to “greatly improved affinity between the surface
of the filler particles and the matrix polymer. Accordingly, the inventive
molding composition has good moldability.” Ohkawa 10:49–52. us,
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Ohkawa teaches that the coupling effect, or this affinity between the particles
and the polymer caused by the water repellent agent, improves moldability
rather than destroys it.
Appellant’s Specification refers to a similar “coupling” effect.
According to the Specification, “[t]he metal particulate can be coupled to the
polymer phase . . . . In general the mechanism[s] used to couple metal
particulate to polymer include solvation, chelation, coordination bonding
(ligand formation), etc.” Spec. 35:25–29 (emphasis added). e
Specification also teaches that a function of interfacial modifiers is
“promoting the close association of polymer and particulate.” Id. at 10:18–
19; see also id. at 4:22–24 (“We have produced a composite by using an
interfacial modifier to improve the association of the particulate with the
polymer.”). Furthermore, as the Examiner correctly points out, the
Specification describes working interfacial modifiers as “coupling agents.”
Answer 13 (citing Spec. 42:9 (describing NZ12 as “a Zirconate coupling
agent”)); see also id. at 42:10–11 (describing KR238J and LICA 09 as
“Titanate coupling agents”); 35:29–30 (“Titanate or zirconate coupling
agents can be used.”). us, a preponderance of the evidence on this record
supports the Examiner’s finding that Ohkawa’s reference to a “coupling
effect” does not suggest the presence of reactive bonding between the
particles and the polymer.
Appellant next argues that Ohkawa teaches that N-(2-aminoethyl)-3-
aminopropyl trimethoxy silane (SIA0591.0) is a preferred embodiment, and
Appellant’s Declarant shows that a composite using this agent “fails to
exhibit the characteristic stress and strain curve/behavior recited in the
present claims.” Appeal Br. 21 (citing Felska Decl. ¶¶ 6, 8–9). us,
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Appellant presents evidence to show that SIA0591.0 would have been
inoperable as a suitable interfacial modifier in the claimed invention.
is argument is not persuasive of reversible error because, as the
Examiner correctly determines, SIA0591.0 “is not representative of the
teachings by Ohkawa.” Final Action 11. SIA0591.0 is only one of two
preferred silane water repellent agents, among others listed as “suitable
silane-based coupling agents.” Ohkawa 7:19–31. Ohkawa also teaches that
“titanate-based coupling agents and silicone fluids are preferred.”13 Id. at
7:12–14. Because Ohkawa teaches agents other than SIA0591.0, such as
titanate coupling agents for which operability is not contested, we need not
determine whether SIA0591.0 is operable as an interfacial modifier under
the claimed invention. C.f. Symbol Techs. Inc. v. Opticon Inc., 935 F.2d
1569, 1578 (Fed. Cir. 1991) (Even “a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under § 103.”).
Appellant also disagrees with the Examiner’s determination that,
according to Ohkawa, the water repellent agent “provides for good
moldability (i.e., melt processing) (col. 2, line 44) which strongly suggests
that there is improved movement because improved moldability requires that
the particles can move relative to one another.” Final Action 11. According
to Appellant, “Ohkawa et al. do not specifically teach that the water
repellant agent provides good moldability, as asserted by the Examiner.”
Appeal Br. 21. Appellant also argues that “[t]his portion of Ohkawa et al.
relates to the molding process and a description of the material during the

13 Note that the Specification features titanate coupling agents (KR238J and
LICA 09) within four of the working examples shown in Table 1. See Spec.
42.
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molding process.” Id. Further, in the hearing, counsel for Appellant argued
that “once [Ohkawa’s material is] finally molded and heated to . . . the
activation temperature of these . . . [composites], it becomes a dimensionally
stable, metal-like replacement material for gears and cases and parts and
things like that.” Tr. 19:20–23.
We do not find these arguments persuasive of reversible error.
Ohkawa teaches that treating the surface of the particles leads to “greatly
improved affinity between the surface of the filler particles and the matrix
polymer. Accordingly, the inventive molding composition has good
moldability.” Ohkawa 10:43–52. Moreover, as the Examiner correctly
explains, Ohkawa teaches an example in which “the exemplified
composition is extruded (first melting) and formed into solid pellets and
subsequently inject[ion] molded (second molding) to form test plates.”
Answer 9 (citing Ohkawa 13:9–17). us, a preponderance of the evidence
on this record indicates that Ohkawa’s water repellent agent contributes to
increased moldability, and that the resulting composite material can retain
good moldability during subsequent remolding.
Appellant points to an example in which “the composite can be
subject to ‘mold shrinkage’ and ‘warping distortion’ after molding and
shaping.” Appeal Br. 21 (citing Ohkawa 6:58–59). is example, however,
does not affect our conclusion, because it refers to a specific embodiment
that uses a fibrous filler, where the aspect ratio of those fibers is too large.
See Ohkawa 6:56–62.
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Whether Schnelle teaches away from using Ohkawa’s
water repellent agent
Schnelle discloses “[a] reusable blasting medium of a
thermoplastically processable polymer granulate filled with finely divided
metal, the metal particles being coated with an adhesion promoter.”
Schnelle, Abstract. Appellant argues that Schnelle teaches away from the use
of Ohkawa’s water repellent agent as the adhesion promoter, because
“Schnelle et al. expressly teach the need for their metal particles to be
adhered to their polymer matrix phase in order to avoid decomposition of
their blasting granules and thereby increase their reusability.” Appeal Br. 23
(citations omitted) (citing Schnelle 2:20–22, 62–65).
Appellant also argues that “a person of ordinary skill in the art would
not have been motivated to make the substitution proposed by the Examiner
because Schnelle et al. do not indicate any issues with moldability but
expressly teach the need for their metal particles to be well bonded to the
polymer matrix phase of their blasting granules to prevent ‘separation of the
components.’” Appeal Br. 23 (citing Schnelle 2:64–65). According to
Appellant, this contrasts with declaratory evidence that in an embodiment of
the claimed invention, the particles are not strongly bound to the polymer.
See id. at 23–26 (citing Williams Decl.14).
We do not find these arguments persuasive. While Schnelle teaches
coating the particles with the adhesion promoter, see Schnelle 2:20–22, and
that the resulting composite material would resist decomposition, see
Schnelle 2:62–65, Appellant does not point to any teaching of Schnelle that
resistance to decomposition depends on the metal particles being strongly or

14 Declaration of Rodney Williams, Dec. 24, 2014 (“Williams Decl.”).
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covalently bound to the polymer matrix phase. As evidenced in Ohkawa and
Appellants’ Specification, the “adhesion” or close association between the
particles and the polymer need not be in the form of a chemical bond.
Moreover, the cited passages in Schnelle do not say that particles must
be “well bonded” to the polymer matrix phase. Rather, Schnelle attributes
the composite material’s breakage resistance to the impact toughness
inherent in thermoplastic materials. See id. at 2:9–11. A reference does not
teach away if it “does not criticize, discredit, or otherwise discourage the
solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellant does not point to any passage in Schnelle that criticizes, discredits,
or otherwise discourages development toward a material that includes
Ohkawa’s water repellent agents.
Whether the combination of references would have
resulted in a composite with the recited properties
e Examiner finds that “Lewchuk discloses that polycarbonates are
known to have high ductility and exhibit plastic deformation under great
stress.” Final Action 4 (citing Lewchuk 1:43–50). According to the
Examiner, “Schnelle discloses and prefers the use of polycarbonate as
thermoplastic polymer which is known to exhibit ductile and plastic
deformation upon applying stress as taught by Lewchuk and further given
that the coupling agent is used to improved mechanical properties as taught
by Ohkawa.”15 Id. us, the Examiner determines that “it would have been
obvious to one of ordinary skill in the art to obtain a mixture comprising

15 Note that Appellant’s Specification discloses “polycarbonate materials” as
suitable resins for the invention. Spec. 25:13.
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polycarbonate and compatibilized metal particles having the presently
claimed stress-strain behavior.” Id.
Appellant argues that “Lewchuk et al. only disclose properties of a
thermoplastic polycarbonate and not whether the stress and strain
curve/behavior of a metal particle-filled composite made with that polymer
would retain those properties.” Appeal Br. 18–19. We do not find this
argument persuasive of reversible error. As the Examiner persuasively
explains, Schnelle discloses that the polycarbonate composite material,
including the adhesion promoter, “is a thermoplastic and therefore
thermoplastically processable and [may be] reworked. A thermoplastic
material is by definition able to be reformed upon heating.” Final Action 14.
As we discuss above in part B.1, the Examiner has provided a
persuasive rationale for why Ohkawa’s water repellent agents improve the
moldability of the resulting composite material. e preponderance of the
evidence on this record indicates that Ohkawa’s interfacial modifiers are
able to retain the thermoplastic nature of the associated polymeric material.
us, Schnelle’s composite material, as modified by Ohkawa, would retain
the ductile nature of its polycarbonate matrix material. Under these
circumstances, the Examiner is entitled to presume that the modified
Schnelle composite inherently exhibits the same strain–stress properties as
the claimed composition. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”).
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Appellant argues that the declaratory evidence “shows that the cited
documents use a reactive coupler that bonds particulate to polymer and thus
cannot show the characteristic stress–strain curve of the claimed materials.”
Reply Br. 2 (citing Felska Decl.). To the extent this is true (a question we
need not decide for the purpose of this decision), it is only true with respect
to one embodiment that the prior art teaches, comprising tungsten powder, a
fluoropolymer, and SIA0591.0 as the interfacial modifier. See Felska Decl.
¶¶ 6–8. However, Appellant has not pointed to any evidence on this record
that other composites motivated by Schnelle and Ohkawa would fail to
exhibit, inherently, the recited stress–strain characteristic. Such a composite
might include, for example, one that comprises a polycarbonate and a
titanate-based interfacial modifier. See Schnelle 2:31 (teaching a preference
for polycarbonate); Ohkawa 4:46 (teaching a preference for polycarbonate),
7:13, 32–49 (teaching a preference for titanate-based coupling agents, and
disclosing specific examples of such agents).
Appellant also argues that the Examiner “failed to identify any
teaching of a viscoelastic composite having the claimed stress–strain
curve/behavior.” Appeal Br. 27. Rather, Appellant argues that the composites
in Ohkawa “can be machined using machine tools like cutting tools, grinders
and lathes—tools that require a stiff and hard material.” Id. (citing Ohkawa
10:56–61). is argument is not persuasive of reversible error. As discussed
above in part B.1, the Examiner has persuasively shown that the matrix in
Ohkawa is moldable. Moreover, Ohkawa teaches that the composite material
has “a combination of moldability and machinability.” Ohkawa 10:54–65.
Appellant does not adequately explain why a material that is both moldable
and machinable is not viscoelastic.
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Whether the recited art is analogous
Appellant argues that Schnelle, Ohkawa, and Lewchuk are non-
analogous art because they neither are in the same field of endeavor nor are
reasonably pertinent to the particular problem that the inventor faced. Appeal
Br. 28 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). In
particular, Appellant argues that unlike the claimed invention, Schnelle
relates to “making a stiff, inextensible ceramic-like particulate used as an
abrasive deflashing media.” Id. (citing Schnelle 1:65–2:4).
We disagree. As the Examiner persuasively explains, Schnelle
discusses the disadvantages of such inextensible ceramic-like particles
known in the prior art, and teaches “softer impact tough thermoplastic
polymers.” Answer 16 (citing Schnelle 1:34–63, 2:5–11). e Specification
describes the relevant field as “metal polymer composites with enhanced
viscoelastic and thermal properties.” Spec. 1:12–13. Schnelle discloses an
invention within that general field. See Unwired Planet, LLC v. Google Inc.,
841 F.3d 995, 1001 (Fed. Cir. 2016) (“ e field of endeavor of a patent is not
limited to the specific point of novelty, the narrowest possible conception of
the field, or the particular focus within a given field.”).
Appellant argues that unlike the claimed invention, Ohkawa is
directed to “making a hard, inextensible molding material with high tensile
strength,” and focuses “on the problem of waterproofing metal particles used
to form a hard, inextensible material that can be cut, ground and lathed by
conventional machine tools.” Appeal Br. 28 (citing Ohkawa 1:24–31, 40–50,
2:38–50). For the reasons discussed above in part B.1, we disagree that
Ohkawa’s material is inextensible. See Answer 16 (“Ohkawa, in fact, teaches
how to effectively improve moldability of a composite comprising a
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thermoplastic polymer and metal particles.”). As with Schnelle, Ohkawa
falls within the field of endeavor (e.g., “metal polymer composites”)
described in the Specification. Spec. 1:12.
Appellant also argues that unlike the claimed invention, Lewchuk “is
directed to obtaining and maintaining optical clarity in the material.” Appeal
Br. 28 (citing Lewchuk 1:51–60). is is not persuasive of reversible error,
however, because the Examiner cites Lewchuk as an evidentiary reference to
show an inherent property of the polycarbonate composite of Schnelle, as
modified by Ohkawa: that it “necessarily exhibits a stress-strain curve like
claimed.” Answer 16–17.
Whether the Examiner provided a sufficient analysis
regarding claim 141
Claim 141 depends from claim 140 and recites “wherein the melt-
processed viscoelastic composite also exhibits characteristic stress and strain
behavior that includes an upper yield stress, a lower yield stress, and a stress
at break, when the melt-processed viscoelastic composite is re-extruded or
re-worked and then subjected to an elongating force to an initiation of
failure.” Appeal Br. 42. e Examiner rejects the claim because “the claimed
characteristic stress-strain behavior is obviously exhibited by a composite
prepared by Schnelle, Ohkawa, and Lewchuk after rextrusion or reworking
because polycarbonate of Schnelle is a thermoplastic and therefore
thermoplastically processable and rework[able].” Final Action 4.
Appellant argues that “the Examiner did not provide any analysis or
explanation to support” the finding that the prior art composite could be re-
extruded or re-worked, or that by definition, a thermoplastic material is
thermoplastically processable and reworkable. Appeal Br. 30. Appellant also
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argues that the prior art composite would not have retained the recited re-
extrudability and re-workability, as well as the recited stress–strain curve,
after being incorporated into the composite, because the composite would
have “strong bonding between the metal particles and the polymer matrix—
not a viscoelastic composite having the properties as claimed.” Id. at 29.
We find the Examiner’s rationale persuasive on this record: that a
person of ordinary skill in the art would have interpreted Schnelle’s
disclosure of a “thermoplastic” material to mean that it is capable of being
re-extruded or re-worked. In addition, we find persuasive the Examiner’s
explanation that Ohkawa discloses an example in which the material is
molded twice (first by extrusion and then by injection molding) after mixing
the components, which would not have been possible if the material became
non-thermoplastic after mixing (for example, by forming a cross-linked
network). See Answer 17.
For the above reasons, we sustain the Examiner’s rejection of claims
123–135 and 137–157 on the first ground.
C. Rejection 2 (Bray and Ohkawa)
With respect to the second ground of rejection, Appellant argues the
claims as a group, except for specific arguments with respect to dependent
claim 141. See Answer 30–34. erefore, under 37 C.F.R. § 41.37(c)(1)(iv),
we limit our discussion regarding the second rejection to claims 123 and
141. Claims 123–131, 133–135, 137–140, 142–158, and 161 fall with claim
123.
e Examiner finds that Bray discloses a high-density composite
material for use as shotgun shot, with the particulate and polymer
composition ranges recited in claim 123. Final Action 5. According to the
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Examiner, Bray discloses each of the limitations of claim 123 except that it
“fails to disclose (i) the addition of an interfacial modifier or (ii) the strain
and other mechanical properties like claimed of the composite material.” Id.
However, the Examiner determines that Ohkawa teaches limitation (i), and
reasons that a skilled artisan would have had reason to add an interfacial
modifier “to improve molding properties.” Id. at 6. e Examiner also
provides a rationale for why the strain and other mechanical properties (ii)
would have been inherent in Bray’s composite as modified by Ohkawa. Id.
at 6–7. According to the Examiner, Bray’s polymer already exhibits these
properties, and adding particles and an interfacial matrix would have
retained those properties, as evidenced by Ohkawa’s teaching that adding a
coupling agent can result in a moldable material that maintains high
mechanical properties. See id. (citing Bray Table 2; Ohkawa 2:38–50); see
also Answer 18.
As with the Examiner’s first ground of rejection, Appellant argues that
Ohkawa’s water repellent agent is not an “interfacial modifier” as recited in
the claims. Appeal Br. 32; see also id. at 33. We do not find this argument
persuasive, for the reasons explained above in part B.1.
Appellant also argues that the Examiner has failed to articulate a
reason why a person of ordinary skill in the art would have added a coating
to Bray’s uncoated particles. Appeal Br. 32. Appellant points out that
Ohkawa published before Bray, and yet Bray did not choose to disclose any
particle coating. Id. Appellant also argues that the Examiner did not establish
that adding a coating to Bray’s particles would maintain the properties of the
virgin polymer in the composite. Id.
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We do not find this argument persuasive of reversible error. e
Examiner articulated a persuasive rationale for combining Bray and
Ohkawa: “to improve molding properties” during melt processing, and
increasing melt flow. Final Action 6; see Bray 6:7–8 (“ e material may be
injection or compression molded into a variety of shapes.”).
Moreover, because Ohkawa teaches coupling agents that do not
destroy the high mechanical properties of the un-modified material, the
Examiner has shown a reasonable basis for a person of ordinary skill in the
art to expect that the modified material would exhibit the mechanical
properties of Bray’s unmodified material. Having made a prima facie case
for inherency, the burden shifts to Appellant to produce evidence showing
“that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” Best, 562 F.2d at 1255.
While Appellant’s declaratory evidence presents evidence on this
issue, it is limited to a composite containing tungsten powder, a
fluoropolymer, and SIA0591.0. See Felska Decl. ¶¶ 6–8. Appellant has not
pointed to evidence on this record that other composites motivated by the
references (e.g., those including a titanate-based interfacial modifier) would
fail to exhibit, inherently, the recited mechanical properties.
Appellant also argues that neither Bray nor Ohkawa is analogous art.
Appeal Br. 33. Ohkawa is analogous to claim 123 for the reasons we discuss
above in part B.4. With respect to Bray, Appellant argues that unlike the
claimed invention, “[t]he teachings of Bray et al. relate to a different field of
endeavor—formation of a high density composite to serve as a substitute for
lead.” Id.
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We agree with the Examiner that Bray is directed to “a high density
composite material comprising thermoplastic polymer and metal particles,”
and it is thus within the same field of endeavor as claim 123. Moreover, we
agree with the Examiner that claim 123 is not directed to any particular
molded article; thus it does not matter that Bray teaches a specific
application of materials within this field as a lead substitute. See Answer 19.
Appellant separately argues claim 141. e Examiner rejects this
claim because “the claimed characteristic stress-strain behavior is obviously
exhibited by a composite prepared by Bray and [Ohkawa]16 after rextrusion
or reworking because polymers used by Bray are thermoplastic and therefore
can be thermoplastically processable and reworked.” Final Action 7.
As with the first rejection, Appellant argues that “the Examiner does
not provide any analysis or explanation to support” the finding that the prior
art composite could be re-extruded or re-worked. Appeal Br. 34. Appellant
also argues that the prior art composite would not have retained the recited
re-extrudability and re-workability, as well as the recited stress–strain curve,
after being incorporated into the composite, because the composite “would
have the particles and polymer bonded to form a hard inextensible material.”
Id.
As we discuss above in part B.5, we find persuasive the Examiner’s
explanation that Ohkawa discloses an example in which the material is
molded twice (first by extrusion and then by injection molding) after mixing
the components, which would not have been possible if the material had

16 e rejection mis-identified this reference as “Ando,” but it is clear from
the context and from the Answer that the Examiner intended this to be
Ohkawa. See Answer 19–20.
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become non-thermoplastic after mixing (for example, by forming a cross-
linked network). See Answer 20.
For the above reasons, we sustain the Examiner’s rejection of claims
123–131, 133–135, 137–158, and 161 on the second ground.
D. Rejection 3 (Bray, Ohkawa, and Bélanger)
Claims 164 and 165 depend from claims 139 and 140, respectively,
and further recite “consisting essentially of metal particulate having an
aspect ratio of less than 1:3 and the thermoplastic polymer phase.” Appeal
Br. 45. e Examiner finds that “Bray fails to disclose the aspect ratio of the
tungsten metal particulate.” Appeal Br. 35. However, the Examiner cites
Bélanger which, according to the Examiner, “discloses a bullet prepared
from a thermoplastic resin with a high volume of copper filler and teaches
that spheroidal metal particles having an aspect ratio of between 1–1.2
allows for high loading in thermoplastic resin and permits extrusion and
injection molding.” Final Action 8 (citation omitted) (citing Bélanger
Abstract, 6:40–51).
According to the Examiner, both Bray and Bélanger relate to
composites with a high loading of metallic particles, and “such metallic
particles are advantageously spherical to allow for the high loading and melt
processing as taught by Bélanger.” Final Action 8. us, “it would have been
obvious to one of ordinary skill in the art to utilize spherical metallic
particles as the metal particulate taught by Bray.” Id.
Appellant argues that these claims use the transitional phrase
“consisting essentially of,” which limit their scope to exclude “components
that would materially change the character of the composite.” Appeal Br. 34.
We agree with the Examiner that for these claims, Appellant has not pointed
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to any “clear indication of what the basic and novel characteristics are” in
the Specification or prosecution history. Answer 21. us, we find no
reversible error in the Examiner’s decision to interpret claims 164 and 165
as if they used “comprising” as the transitional phrase. See PPG Indus. v.
Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998); In re De
Lajarte, 337 F.2d 870, 874 (CCPA 1964) (“Appellant has the burden of
showing the basic or novel characteristics” of the invention.”).
Appellant also argues that Bélanger discloses “a frangible target bullet
that is designed to shatter on impact in order to prevent injury to shooters
from ricochet of larger bullet/bullet fragments.” Appeal Br. 35 (citing
Bélanger 1:5–7, 2:56–68). us, Appellant argues that a person of ordinary
skill in the art “would have recognized that such a frangible material is stiff
and cannot exhibit the stress and strain curve/behavior as claimed.” Id.
We do not find this argument persuasive of reversible error. e
Examiner cites Bélanger because it teaches an advantage in using spherical
particles. See Answer 20. A teaching reference need not suggest every
limitation in the invention as a whole. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). us, it does not matter whether or not the material in
Bélanger, itself, exhibits the strain–stress curve recited in the claims.
Appellant further argues that, unlike the particles in claims 164 and
165, “the use of an uncoated particle in Bélanger makes clear that the person
of ordinary skill in the art at the time of the invention would have been
motivated to use an uncoated particle.” Appeal Br. 35. We interpret this as
an argument that Bélanger teaches away from using a coated particle. We do
not find the argument persuasive, because Bélanger’s use of an uncoated
particle does not, in itself, criticize, discredit, or otherwise discourage the
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solution of claims 164 and 165. See Fulton, 391 F.3d at 1201; see also
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005)
(“[A] prior art reference that does not specifically refer to one element of a
combination does not, per se, teach away.”).
For the above reasons, we sustain the Examiner’s rejection of claims
164 and 165 on the third ground.
CONCLUSION
For the above reasons, and based on the Examiner’s findings and
conclusions as a whole which we find persuasive, the preponderance of the
evidence supports the Examiner’s conclusion of obviousness, and Appellant
has not shown reversible error. We therefore affirm the Examiner’s decision
on all grounds.
DECISION
e Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. §§ 1.136(a)(1)(iv), 41.50(f)
(2018).
AFFIRMED