Kurt E. Heikkila et al.

Patent Trials and Appeals Board

Aug 2, 2019

12769509 - (D) (P.T.A.B. Aug. 2, 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.
12/769,509 04/28/2010 Kurt E. Heikkila 492.0014USU2 7786
134675 7590 08/02/2019
Tundra Composites, LLC
1700 Buerkle Road
White Bear Lake, MN 55110
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
eofficeaction@appcoll.com
fmorgan@tundracompanies.com
mdipietro@tundracompanies.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KURT E. HEIKKILA, RODNEY K. WILLIAMS, and
JOHN S. KROLL
____________________

Appeal 2017-008655
Application 12/769,509
Technology Center 1700
____________________

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

OGDEN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3–11, 14, 15, 19–23, 25–27, 36–40, and 43–46
in the above-identified application.3 Counsel for Appellants appeared for a
hearing on April 16, 2019.4 We affirm.

1 e appeal record includes the following: Specification, Apr. 28, 2010
(“Spec.”); Final Office Action, Apr. 5, 2016 (“Final Action”); Appeal Brief,
Oct. 5, 2016 (“Appeal Br.”); Examiner’s Answer, Mar. 23, 2017 (“Answer”);
and Reply Brief, May 22, 2017 (“Reply Br.”).
2 According to the Appeal Brief, the real party in interest is Tundra
Composites, LLC. Appeal Br. 3.
3 e Examiner has withdrawn pending claims 28–35 and 48–51 from
consideration. Final Action 1.
4 See Hearing Transcript, entered July 10, 2019 (“Tr.”).
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BACKGROUND
Appellants’ invention relates to a composite of a nonmetallic,
inorganic mineral with a polymer. Spec. 1:11–12. According to Appellants,
the composite material “behave[s] as a viscoelastic material, with
thermoplastic and rheological characteristics like those of the polymer used
in the composite material due to the lack of bonding of particle to polymer.”
Appeal Br. 3. According to the Specification, inorganic “particulate material
is typically coated with an interfacial modifier, a surface chemical treatment
that supports or enhance[s] the final properties of the composite.” Spec.
4:14–16. Appellants “believe an interfacial modifier is an organic material
that provides an exterior coating on the particulate promoting the close
association (but with substantially no covalent bonding to the polymer or
particle) of [the] polymer and particulate.” Id. at 7:25–27. “Typically . . .
covalent bonds, linking the particle or interfacial modifier, and the polymer
[are] not formed.” Id. at 30:1–2.
Independent claim 1, which we reproduce below, is representative:
1. A shaped structural article comprising a thermoplastic
viscoelastic composite, the composite comprising:
(a) about 30 to 87 vol.-% of an inorganic, non-metallic or
mineral particle having a particle size Ps greater than about 10
to 1000 microns having a coating of about 0.005 to 8 wt.-% of
an interfacial modifier, the interfacial modifier forming an
exterior coating on the particle surface, the exterior coating
comprising an interfacial modifier with a non-reacted end[], the
interfacial modifier providing a greater freedom of movement of
the particles when processed in the composite compared to the
same composite without the particles having the exterior
coating comprising the interfacial modifier, wherein the vol.-%
is based on the composite; and
(b) a thermoplastic polymer wherein the polymer is free
of a polymer comprising polybutylene terephthalate or
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tetrafluoroethylene, hexafluoropropylene,
or[ ]perfluoroalkylvinyl ether; and the shaped article is formed
from the composite with a[ ]conventional thermoplastic
forming technique, selected from the group consisting of
extrusion, melt molding, injection molding, and compression
molding.
Appeal Br. 29 (emphasis of key phrase added). Claim 43, also independent,
includes similar limitations. Id. at 33–34. Claims 3–11, 14, 15, 19–23, 25–
27, and 36–40 depend directly or indirectly from claim 1, while claims 44–
46 depend from claim 43. See id. at 29–34.
e Examiner’s grounds of rejection are as follows:
Rejection 1: claims 3, 6, and 14 under 35 U.S.C. § 112, 4th paragraph,
as being of improper dependent form. Final Action 2.
Rejection 2: claims 1, 3, 4, 6–11, 14, 15, 19–21, and 37–40 under 35
U.S.C. § 103(a) as being unpatentable over Ohkawa.5 Id. at 2–4.
Rejection 3: claim 25 under 35 U.S.C. § 103(a) as being unpatentable
over Ohkawa and Allen.6 Id. at 4–5.
Rejection 4: claims 1, 3–11, 14, 36, 38–40, and 43–46 under 35
U.S.C. § 103(a) as being unpatentable over Funk.7 Id. at 5–7.
Rejection 5: claims 19–23 under 35 U.S.C. § 103(a) as being
unpatentable over Funk and Osuna.8 Id. at 7.

5 Ohkawa et al., US 4,891,399 (issued Jan. 2, 1990) (“Ohkawa”).
6 Allen et al., US 5,214,088 (issued May 25, 1993) (“Allen”).
7 Funk et al., DD 130863 A (published May 10, 1978) (“Funk”). Citations to
Funk are to the translation of record.
8 Osuna et al., US 6,204,303 B1 (issued Mar. 20, 2001) (“Osuna”).
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DISCUSSION
A. Rejection 1 (35 U.S.C. § 112, para. 4)
Appellants do not contest the Examiner’s rejection of claims 3, 6, and
14 under 35 U.S.C. § 112, 4th paragraph. See Appeal Br. 7; Answer 2 (“No
arguments were made against this ground of rejection.”). erefore, we
summarily affirm this rejection.
B. Rejection 2 (Ohkawa)
With respect to the second ground of rejection, Appellants argue the
claims as a group. See Appeal Br. 15–25. erefore, under 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to claim 1. Claims 3, 4, 6–11, 14,
15, 19–21, and 37–40 fall with claim 1.
e Examiner finds that Ohkawa explicitly teaches all the limitations
of claim 1, except that it “fails to disclose in a single embodiment a
composite comprising an inorganic [particle] that is not a metal or alloy that
has a particle size of greater than about [10] microns.” Final Action 3.
However, the Examiner finds that “Ohkawa clearly describes using a zinc
oxide or other ceramic material and that the particle diameter is 0.1–20
microns,” which overlaps the particle size range of claim 1. Id. at 3–4. us,
the Examiner determines that “it would have been obvious to one of
ordinary skill in the art to select both the claimed particle and particle size as
being a suitable particle for use in the thermoplastic molding composition.”
Id. at 4.
In response to the rejection, Appellants argue (1) that the Examiner
incorrectly characterizes Ohkawa’s water repellent agent as an “interfacial
modifier” that provides “greater freedom of movement,” (2) that Ohkawa
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does not disclose a thermoplastic viscoelastic composite, (3) that Ohkawa
requires a small particle size that would interfere with the properties of the
composite, and (4) that Ohkawa is not analogous to the claimed invention.
Appeal Br. 15–16. For the reasons discussed below, we do not find any of
these arguments persuasive of reversible error.
Whether the Examiner incorrectly characterizes
Ohkawa’s water repellent agents as “interfacial modifiers” that
provide “greater freedom of movement”
Appellants argue that Ohkawa’s water repellent agent is a “‘reactive
coupling agent’ . . . or adhesion agent that bonds polymer to particle and
prevents ‘freedom of movement.’” Appeal Br. 16. In the claimed invention,
according to Appellants, “[t]his ‘greater freedom of movement’ is achieved
because the particles are not strongly bound to the polymer phase or to other
particles,” and this freedom would not exist if the particles were “bonded
with the surrounding polymer matrix.” Id. (citing Williams 2014 Decl.9 ¶ 9).
Appellants present microscopic images of the claimed material, before and
after stretching, purporting to show freedom of particle movement. Id. at 16–
18.
Appellants also argue that one of Ohkawa’s preferred embodiments is
“the reactive amino silane waterproofing/coupling agent N-(2-aminoethyl)-
3-aminopropyl trimethoxysilane.” Id. at 18. Based on evidence presented by
Declarant Wade Felska, Appellants argue that “an exemplary metal particle
filled polymer composite material, having its particles reacted with this
reactive amino silane coupling agent . . . fails to exhibit the viscoelastic and

9 Declaration of Rodney Williams, Dec. 24, 2014 (“Williams 2014 Decl.”).
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thermoplastic character recited in the present claims.” Id. (citing Felska
Decl.10).
is argument is not persuasive of reversible error in the Examiner’s
rejection. In Ohkawa, N-(2-aminoethyl)-3-aminopropyl trimethoxysilane 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
notes that there are several classes of suitable agents, “of which silane-based
coupling agents, titanate-based coupling agents and silicone fluids are
preferred.” Id. at 7:12–14. us, Ohkawa teaches a broad range of agents
other than the one Mr. Felska examined. For example, Ohkawa teaches a
preference for titanate compounds which, according to Appellants’
Specification, are among the broad classes of “[i]nterfacial modifiers used in
the non-reactive or non-crosslinking application.” Spec. 27:14–15.
us, a preponderance of the evidence on this record supports the
Examiner’s determination that Ohkawa teaches non-reactive or non-
crosslinking water repellent agents that would increase freedom of
movement of the particles, leading to the formation of a thermoplastic,
viscoelastic composite. is is true regardless of whether or not the choice of
N-(2-aminoethyl)-3-aminopropyl trimethoxysilane, in particular, would lead
to this result.
Whether Ohkawa discloses a thermoplastic viscoelastic
composite
e Examiner also finds that Ohkawa describes its composite material
as having “high mechanical properties,” which “is indicative of viscoelastic

10 Declaration of Wade Felska, Dec. 14, 2012 (“Felska Decl.”).
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characteristics.” Answer 9. Moreover, the Examiner finds that Ohkawa’s
composite is thermoplastic because the material exhibits improved
moldability (including the ability to be remolded after an initial extrusion).
See id. at 9. According to the Examiner, this would not be possible if the
water repellent agent caused a crosslinking network to form, and thus caused
the material to lose its thermoplastic character. See id. e Examiner states
that “[t]hermoplastic polymers and thermoplastic composites thereof are
known to be viscoelastic materials, i.e., having both elastic deformation at
low strain and plastic at high strains and having these properties dependent
on temperature and deformation rate.” Answer 17.
First, Appellants argue that Ohkawa’s composite material “can easily
be cut[,] ground and shaped by [a] lathe. Such a stiff and inextensible
material is not viscoelastic,” unlike the claimed invention. Appeal Br. 19.
Appellants further argue that Ohkawa teaches a “rigid material that can be
cut or ground,” and that “can be used in ‘flywheels, gears, pulleys, cams,
motors and the like.’” Id. (citing and quoting Ohkawa, Abstract, 10:19–41).
Appellants argue that “[v]iscoelastic materials are not suited for such
purposes and cannot be cut, lathed or ground into a useful gear etc.” Id.
We do not find this argument persuasive of reversible error. A
preponderance of the evidence on this record suggests, as the Examiner
explains, that “a viscoelastic composite is not exclusive of a material that is
stiff or hard.” Answer 17. Consistent with this, the Specification states that
composites of the claimed invention have “improved hardness,” Spec. 47:3,
and the choice of a particular polyester polymer “provides stiffness[ and]
hardness,” id. at 23:21–22. Appellants do not explain why a stiff or hard
material cannot also be viscoelastic. Furthermore, we agree with the
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Examiner that Ohkawa discloses that its composites are “thermoplastic,” and
thus indicative of viscoelasticity. See Ohkawa, Abstract (“ e thermoplastic
polymeric molding composition of the invention . . . .”), 10:50–68
(composite materials are both moldable and machinable).
Second, Appellants argue that Ohkawa does not teach a viscoelastic
material because its particles have a reactive coating of N-(2-aminoethyl)-3-
aminopropyl trimethoxysilane, and do not have an exterior coating that
provides greater freedom of movement of the particles within the polymer
phase. Appeal Br. 19. Appellants further point to evidence in a related patent
application, in which a comparative example comprises N-(2-aminoethyl)-3-
aminopropyl trimethoxysilane, but the composite had a low melt flow index
and low tensile elongation. Id. at 20–21. We do not find these arguments
persuasive, because Ohkawa’s disclosure is not limited to this particular
coupling agent, for the reasons we discuss above in part B.1.
ird, Appellants argue that Ohkawa teaches away from increasing
freedom of movement of the particles in the matrix. See Appeal Br. 19
(citing Ohkawa 8:14–16 (“When the amount [of water repellent agent] is too
large, . . . a phenomenon of slipping may be caused due to the excessively
strong effect of lubrication between the filler surface and the matrix phase
. . . .”)). Moreover, according to Appellants, Ohkawa teaches that there must
be at least enough “coupler to incite a ‘sufficient coupling effect between the
surface of the filler and the matrix phase.’” Id. at 20 (quoting Ohkawa 8:11–
12). Appellants argue that “[i]n this art, a coupler is understood to[ ]be a
reactive material that bonds the particle to the polymer.” Id.
is argument is not persuasive of reversible error. Appellants do not
point to evidence on this record, apart from attorney argument, that either
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coupler or coupling effect is a term of art referring to a reactive material that
covalently bonds to the polymer. Moreover, Appellants’ argument is
inconsistent with how their Specification uses the term couple: “In general,
the mechanism used to couple particulate to polymer include solvation,
chelation, coordination bonding (ligand formation), etc. Typically, however,
covalent bonds, linking the particle or interfacial modifier[] and the
polymer[, are] not formed.” Spec. 29:29–30:2 (emphasis added). Further, the
Specification states that a function of interfacial modifiers is to “provide the
close association of the particle with the polymer.” Id. at 27:13; see also id.
at 15:24–25. us, the preponderance of the evidence supports the
Examiner’s finding that a person of ordinary skill in the art would have
understood Ohkawa’s “coupling effect” or “affinity” to refer to this non-
reactive, non-covalent affinity between the particles and the polymer.
Answer 18–19, 22.
Fourth, Appellants argue that Ohkawa teaches the use of “reactive
materials (vinyl monomer, epoxy agents, etc.) to increase stiffness.” Appeal
Br. 20 (Ohkawa 8:60–9:25). is argument is not persuasive, however,
because the cited passage of Ohkawa does not teach simply to add these
reactive components to the polymer matrix of the composite material.
Rather, they are for modifying polyolefins (such as polyethylene and
polypropylene), in order to create optional additives for the composite
material. See Ohkawa 8:64–9:3 (“[I]t is sometimes advantageous to admix
the composition with a modifier . . . such as a modified polyolefin . . . .
Suitable polyolefin-based modifiers include, for example, polyethylene and
polypropylene modified by graft polymerization . . . .” (emphasis added)).
Appellants do not make any technical argument that these modified
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polyolefin additives, once formed, would react with the polymer matrix.
Even if they did react, the preponderance of the evidence on this record
leads us to determine that a person of ordinary skill in the art would have
regarded them as optional.
Finally, Appellants argue that based on the data found in Ohkawa’s
Tables 3 and 5, “the exemplified materials cannot have the extension of the
claimed materials.” Id. However, Appellants (1) do not point to any
limitation in claim 1 that requires a particular extension, (2) do not provide
any technical argument as to why Tables 3 and 5 would preclude that
extension, and (3) do not point to any other supporting evidence. Moreover,
Tables 3 and 5 only relate to Examples 104–107 and 111–113, and to a
limited subset of components disclosed in Ohkawa as a whole. us, we do
not find this argument persuasive of reversible error.
Whether Ohkawa requires a particle size that is too small
Claim 1 recites a particle size range of “greater than about 10 to 1000
microns.” Appeal Br. 29. e Examiner finds that Ohkawa teaches particle
sizes in the range of 0.1–20 microns, which overlaps the recited range. Final
Action 3 (citing Ohkawa 3:20–27).
Appellants argue that “the particle size in Ohkawa prevents efficient
coating and substantially prevents creation of the claimed viscoelastic
properties.” Appeal Br. 21. According to Appellants, Ohkawa “discloses
small particles, 0.1 to 5 micron, typically 3 microns, zinc oxide (ZnO) in the
examples.” Appeal Br. 22 (citing Ohkawa 12:29, Table 3). Appellants argue
that when Ohkawa describes the use of larger particles, it is in conjunction
with a separate fibrous filler. See id. Appellants argue that “[t]he particle
becomes difficult to coat as the size becomes smaller than 10 microns,”
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because “[a]t small diameters the dispersed material is predominantly
coating of [interfacial modifier].” Id. at 23; see also Reply Br. 9. Likewise,
in the hearing, counsel for Appellants argued that “[a]s the particle size gets
small, the surface area goes up very, very fast in a geometric sequence. And
you just can’t add enough coating material to coat that much surface area as
the particle sizes are reduced.” Tr. 26:16–19.
ese arguments are not persuasive of reversible error. e existence
of examples in which the particle size is less than 10 microns does not
negate Ohkawa’s general teaching of particle sizes in the range of 0.1–20
microns. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“[T]he fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered” (alteration in original)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))). Moreover,
because claim 1 is an open-ended “comprising” claim, it would not exclude
the presence of an additional filler such as fibers. Appellants have not
pointed to evidence on this record that an additional fibrous filler would
destroy the viscoelastic nature of the composite material.
In addition, while Appellants argue that it becomes increasingly
difficult to coat smaller particles, Appellants have not pointed to evidence on
this appeal record showing results for a critical range greater than about 10
microns, or that this range would have been unexpected at the time of
invention. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (Where
the difference between the claimed invention and the prior art is some range,
“the applicant must show that the particular range is critical, generally by
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showing that the claimed range achieves unexpected results relative to the
prior art range.”)
Appellants also argue that “[l]arger particles, in comparative
examples, teach away[ ]from the claimed materials.” Appeal Br. 22. We
disagree. While comparative examples may include larger particles,
Appellants have not pointed to any teaching in Ohkawa that would have
dissuaded a person of ordinary skill in the art from a line of development
flowing from the use of larger particle sizes, given an appropriate selection
of polymer and water repellent agent. See Santarus, Inc. v. Par Pharm., Inc.,
694 F.3d 1344, 1354 (Fed. Cir. 2012) (“A reference teaches away when it
suggests that the line of development flowing from the reference’s disclosure
is unlikely to be productive of the result sought by the applicant.” (quoting
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
(quotations omitted))).
For the above reasons, Appellants’ arguments regarding the particle
size limitation of claim 1 are not persuasive of reversible error.
Whether Ohkawa is analogous art or inconsistent with
the Examiner’s findings
Appellants argue that Ohkawa is non-analogous art because its
“reactive coupling agents bond particle to polymer and obtain a waterproof
and stiff inextensible composite.” Appeal Br. 23.
We find this argument unpersuasive. ere are two separate tests
defining the scope of analogous art: “(1) whether the art is from the same
field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
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the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Ohkawa is in the same field of endeavor as Appellants’ invention: that of a
thermoplastic composite material. In addition, Ohkawa teaches the use of
interfacial modifiers, which is reasonably pertinent to the problem with
which Appellants are involved. us, Ohkawa is analogous art under both
tests.
Appellants also argue that “[t]he Examiner’s position is . . .
inconsistent with” the teachings of Ohkawa relating to the water repellent
agent. Appeal Br. 24. According to Ohkawa,
[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 strongly 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.’” Final Action 3 (citing Ohkawa 8:14–26).
Appellants disagree, pointing out that Ohkawa teaches that too little
water repellent agent leads to insufficient “coupling effect.” Appeal Br. 24.
(citing Ohkawa 8:10–14). Similarly, Appellants point to a passage in
Ohkawa teaching a “surface treatment with a water repellent agent so that
the filler particles dispersed in the polymeric matrix . . . [have] greatly
improved affinity between the surface of the filler particles and the
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matrix polymer.” Id. (quoting Ohkawa 10:42–50). According to Appellants,
these passages are inconsistent with the Examiner’s determination that
Ohkawa teaches greater freedom of movement of the particles.
We agree with the Examiner that Ohkawa’s reference to a “coupling
effect” and “improved affinity” does not suggest that Ohkawa’s coupling
agent forms covalent bonds with the polymer matrix. See Answer 22. As we
noted above in part B.2, the Specification teaches that working interfacial
modifiers couple the particles with the polymer, and promote their close
association, but this does not typically involve a covalent bond. See Spec.
15:24–25, 27:13, 29:30–30:2. In the Answer, the Examiner further elaborates
that “[i]f the particles have more affinity to themselves than to the polymer,
the particles would aggregate together and not be able to disperse in the
thermoplastic polymer. erefore, some interaction or ‘affinity’ is essential
between the particle and polymer and not contrary to ‘freedom of
movement.’” Answer 22. A preponderance of the evidence on this record
supports the Examiner’s finding.
For the above reasons, we sustain the Examiner’s rejection of claims
1, 3, 4, 6–11, 14, 15, 19–21, and 37–40 as unpatentable over Ohkawa.
C. Rejection 3 (Ohkawa and Allen)
Claim 25 depends from claim 1 and further recites “wherein the
inorganic, non-metallic or mineral particle in the composite comprises
zirconium silicate.” Appeal Br. 31. e Examiner finds that Ohkawa teaches
zinc oxide and is open to other similar components. Final Action 5. e
Examiner also finds that “Allen discloses a dense thermoplastic molding
composition comprising a filler which [is selected from] zinc oxide,
zirconium oxide, and zirconium silicate.” Id. (citing Allen, Abstract). Given
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that Allen teaches zirconium silicate as an alternative to zinc oxide, the
Examiner determines that “it would have been obvious to one of ordinary
skill in the art to utilize zirconium oxide as the metallic filler in the molding
composition of Ohkawa.” Id.
Appellants argue that Allen “is not analogous art because it relates to a
different field (i.e.) a stiff inextensible ceramic-like composite used in
dishware.” Appeal Br. 26 (citing Allen 2:8–28). Appellants also argue that
the problem addressed in Allen “relates to obtaining high levels of packing
but retaining a smooth product surface, ceramic feel in a dense molded
article.” Id. (citing Allen 2:9–27). Further, Appellants argue that the particles
in Allen are 3 microns, and there are no composite-forming additive
materials. Id. (citing Allen, col. 14, et seq.)
ese arguments are not persuasive of reversible error. e Examiner
cites Allen to show that a person of ordinary skill in the art would have
considered a zirconium silicate filler to have similar properties to a zinc
oxide filler in a thermoplastic molding composition. is is pertinent to the
problem addressed in claim 25. Moreover, “[t]he 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.” Unwired
Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Allen
describes its field as “improved thermoplastic molding compositions.” Allen
1:15–16. is description could just as aptly describe the field of Appellants’
claimed invention.
For the above reasons, we sustain the Examiner’s rejection of claim
25 as unpatentable over Ohkawa in view of Allen.
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D. Rejection 4 (Funk)
With respect to the fourth rejection, Appellants argue the claims as a
group. See Appeal Br. 27. erefore, under 37 C.F.R. § 41.37(c)(1)(iv), we
limit our discussion to claim 1. Claims 3–11, 14, 36, 38–40, and 43–46 fall
with claim 1.
e Examiner finds that “Funk discloses a thermoplastic molding
material made by compounding polyamides with . . . spherical glass particles
having a particle diameter of 30–500 microns,” together with a polymer and
an interfacial modifier. Final Action 5. According to the Examiner, the
interfacial modifiers in Funk include aliphatic hydrocarbons, unsaturated
aliphatic fatty acids, and aliphatic fatty acid esters. Id. e Examiner finds
that these interfacial modifiers “improve bonding between glass spheres and
polymer and improve flow properties (i.e., claimed greater freedom of
movement of particles) and comprise a ‘non-reacted end’ like claimed.” Id.
(citing Funk 5).
Appellants argue that Funk “does not show an interfacial modifier,
does not show a viscoelastic composite or a coated particle a[s] claimed,”
and therefore, it “cannot have the viscoelastic and thermoplastic properties
as claimed.” Appeal Br. 26. In the Reply Brief, Appellants also argue that
“[t]he unsaturated fatty acid materials in Funk are known to be reactive
coupling agents as discussed in Ohkawa.” Reply Br. 5 (citing Ohkawa 9:1–
17).
We do not find this argument persuasive of reversible error. As we
discuss above in part B.2, Ohkawa’s reference to fatty acids is in the context
of forming an optional modified polyolefin additive. Appellants do not make
any technical argument that these polyolefin additives, once created, would
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be reactive to the composite matrix. Moreover, Appellants’ Specification
teaches that “stearic acid derivatives” are among the broad categories of
“[i]nterfacial modifiers used in the non-reactive or non-crosslinking
application.” Spec. 27:14–15. is suggests that Funk’s fatty acid modifiers
would act to provide greater freedom of movement in a composite material.
Appellants also point to a passage in Funk stating that the technology
works by “improving the bond between the glass parts and the polyamides.”
Appeal Br. 27 (quoting Funk 3:2–5) (citing Funk 4:20–23 (“ e purpose of
the invention is the development of a method for improving the bonding or
the adhesion between the thermoplastic materials made of polyamides and
glass beads . . . .”) (emphasis added)). According to Appellants, the reference
to a “bond” indicates that Funk’s “material does not use [a] coated particle
and is not viscoelastic,” and that the bonds between the particles and the
polymer “prevent freedom of movement as claimed.” Id.; see also Reply Br.
5–6 (citing Funk 6–7 (describing an additive including hydrocarbons and
fatty acid derivatives as an “adhesion promoter”).
We do not find this argument persuasive of reversible error. As we
discuss above in part B.4, the Examiner has persuasively explained that
“some interaction or ‘affinity’ is essential between the particle and polymer
and not contrary to ‘freedom of movement.’” Answer 22. Moreover, as we
noted above in part B.2, the Specification teaches that interfacial modifiers
work to “couple particulate to polymer” without a covalent bond, Spec.
29:30, and to “provide the close association of the particle with the
polymer,” id. at 27:13; see also id. at 15:24–25. e preponderance of the
evidence on this record supports the Examiner’s finding that this close, non-
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covalent association is the type of “bonding or adhesion” that Funk discloses
between the glass spheres and the polymer.
Appellants also points to Funk’s teaching that “[t]he advantages of the
invention in comparison to the prior art consist of the continuous
incorporation possibility of special additives without premixing the
particles with [said] additives.” Appeal Br. 27 (quoting Funk 5:1–3) (citing
Funk 6:7–13). In light of this, Appellants argue that “[t]his combination of
oily/fatty acid materials cannot act as an interfacial modifier,” because “no
coating is made on just the particles.” Id.
In response, the Examiner finds that Funk’s disclosure of an improved
bonding or affinity between the glass and the polyamide “indicates that a
coating is formed at the interface between the glass and polyamide, even
though pretreatment of the glass is not taught. e claims do not require that
the coating fully encapsulates the particles.” Answer 25. To this, Appellants
respond that “[t]he materials in Funk are not made by ‘adding’ the additives
‘at the interface.’ e crosslinking agents are blended into the polymer with
the other components. ere is no basis in Funk for an interface coating.”
Reply Br. 5.
We find the Examiner’s explanation persuasive, by a preponderance of
the evidence. Moreover, the Examiner correctly points out that Appellants’
Specification includes an embodiment that—like Funk—calls for adding the
interfacial modifier, in bulk, to polymer and particle filler. See Answer 25
(citing Spec. 31:6–13).
For the above reasons, we affirm the Examiner’s rejection of claims 1,
3–11, 14, 36, 38–40, and 43–46 as unpatentable over Funk.
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E. Rejection 5 (Funk and Osuna)
With respect to the fifth ground of rejection, Appellants argue the
claims as a group. See Appeal Br. 27–28. erefore, under 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to claim 19. Claims 20–23 fall
with claim 19.
Claim 19 depends from claim 1, and further recites “wherein the
composite additionally comprises a second particulate, the second particulate
comprising an inorganic, non-metallic or mineral particle.” Appeal Br. 31.
For this limitation, the Examiner relies on Osuna’s teaching that a
“bimodal distribution of particle sizes enhances packing efficiency.” Final
Action 7 (citing Osuna 3:45–50).
Appellants argue that Osuna “is not analogous art because it relates to
a UV crosslinked acrylic thermoset heat conductive film,” which “shows a
composite with no composite forming additive material.” Appeal Br. 27–28
(citing Osuna 1:10–20, 2:11–43). Moreover, Appellants argue that Osuna’s
material is crosslinked. Id. (citing Osuna cols. 3–4).
We agree with the Examiner that Osuna is reasonably pertinent to the
problem of improving loading efficiency in a highly filled polymer. See
Answer 26. us, by a preponderance of the evidence, Osuna is analogous to
the claimed invention.
For the above reasons, we sustain the Examiner’s rejection of claim
19–23 as unpatentable over Funk in view of Osuna.
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
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evidence supports the Examiner’s conclusion of obviousness, and Appellants
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