PPG Industries Ohio, Inc.

Patent Trials and Appeals Board

Jul 31, 2020

14205798 - (D) (P.T.A.B. Jul. 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.
14/205,798 03/12/2014 Garry Duran Puckett 32961/899909 5099
23342 7590 07/31/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
COHEN, STEFANIE J
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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 GARRY DURAN PUCKETT
Appeal 2019-005940
Application 14/205,798
Technology Center 1700

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–9, 12–17, and 19–23. See Final
Act. 1. An oral hearing was held on July 20, 2020. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Electric Glass Fiber American, LLC. as
the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a sizing composition for glass fibers.
Claim 1, reproduced below, is illustrative of the claimed subject matter
(disputed limitations italicized):
1. A sizing composition for glass fibers, comprising:
a starch in an amount up to about 45 percent by weight
on a total solids basis, wherein the starch comprises about 10 to
about 30 percent amylase based on starch weight;
a nonionic lubricant;
a silane comprising at least one amine and at least one
aryl or arylene group; and
an aminofunctional oligomeric siloxane in an amount of
between about 2 and about 12 percent by weight of the sizing
composition on a total solids basis, wherein the
aminofunctional oligomeric siloxane comprises at least one
alkyl group bonded to a first silicon atom and at least one
amine bonded to a second silicon atom.
Appeal Br. 13 (Claims Appendix) (emphasis added).
REFERENCES
The Examiner relies upon the following prior art references.
Name Reference Date
Fahey US 4,259,190 Mar. 31, 1981
Mack US 6,395,858 B1 May 28, 2002
Puckett US 2005/0255316 A1 Nov. 17, 2005

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Application 14/205,798
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REJECTIONS
The Examiner maintains the following rejections. Final Act. 2; Ans. 3,
7; Advisory Action dated November 20, 2018, 3.2
Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis
1, 3–9, 12–17, 19–
23 103(a) Puckett, Mack, Fahey
1, 3–6, 16, 17, 22,
23
Double Patenting Puckett ’641
claim 22, Mack, Fahey

OPINION
Obviousness
The Examiner rejects claims 1, 3–9, 12–17, and 19–23 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Puckett, Mack, and Fahey.
Final Act. 2.
Appellant does not separately argue the patentability of the claims
over Puckett, Mack, and Fahey, therefore, we select claim 1 as
representative and claims 3–9, 12–17, and 19–23 stand or fall together with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv); Appeal Br. 4–11.
Appellant contends Fahey’s teachings regarding the amount of
siloxane to be added to a sizing composition are limited to non-
aminofunctional and non-oligomeric siloxanes. Appeal Br. 5–6. Appellant
contends the Examiner’s rejection is based on impermissible hindsight
because a skilled artisan would have had to ignore Fahey’s “opposite

2 Non-Final Office Action dated April 6, 2018 includes two obviousness-
type double patenting rejections over US 7,892,641 B2, issued Feb. 22, 2011
(“Puckett ’641), however, only the rejection over claim 22 in view of Mack
and Fahey is maintained in the Examiner’s Answer. Ans. 3. Therefore, the
rejection over Puckett ’641’s claim 30 in view of Mack and Fahey is not
involved in this Appeal.
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Application 14/205,798
4
teachings on starch in order to select only the amount of an oligomeric
siloxane.” Id. at 8 (emphasis omitted). Appellant asserts Puckett and Mack
provide no teaching, suggestion, or motivation to use starch in an amount
greater than 42% on a total solids basis, Fahey provides no teaching,
suggestion, or motivation to use less than 50% starch on a total solids basis,
and, therefore, Fahey teaches away from the claimed composition and
cannot be combined with Puckett and Mack based on Fahey’s higher amount
of starch. Id. at 9–10. Appellant also argues the Examiner’s finding that
Fahey’s amount of siloxane overlaps the claimed amount lacks calculations
or substantiation. Id. at 6.
We are not persuaded by Appellant’s arguments.
Appellant does not dispute the Examiner’s finding that Puckett
discloses a sizing composition for glass fibers that comprises a starch
containing up to about 40 weight percent amylose, a nonionic lubricant, and
a silane comprising at least one amine and at least one aryl or arylene group
in an amount greater than about 10 percent by weight as required by claim 1.
Final Act. 2–3. Nor does Appellant dispute the Examiner’s finding that
Mack discloses an aminofunctional oligomeric siloxane as required by claim
1 and that Mack’s aminofunctional oligomeric siloxanes possess
advantageous properties such as heightened boiling point, increased flash
point, and reduced vapor pressure. Final Act. 3–4; Mack 6:33–39. The
Examiner’s findings are all supported by the record.
In their briefs, Appellant also does not dispute the Examiner’s finding
that Mack explicitly discloses its aminofunctional oligomeric siloxanes are
useful as a coupling agent in a sizing composition for coating glass fibers.
Final Act. 3; Ans. 12. The Examiner’s finding is supported by the record.
Mack Title, 3:7–8 (Among Mack’s nine enumerated methods of using the
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disclosed siloxane mixtures is “a method of coating glass fibers, by applying
the composition to glass fibers.”). At oral hearing, Appellant’s representative
characterized Mack’s disclosure as generally teaching its aminofunctional
oligomeric siloxanes are useful “everywhere that silane and siloxanes are
used” with the specific utility in a sizing composition being just one
application in “a laundry list of potential applications.” Tr. 8. Appellant’s
representative questioned whether it would have been undue
experimentation to arrive at the claimed siloxane amount useful in a sizing
composition on the basis of “finite possibilities” if Mack discloses
“thousands of different chemical entities and then probably dozens of uses.”
Id. at 8–9.
In light of Mack’s explicit teachings that (1) its chemical entities are
aminopropyl-functional siloxane oligomers (Mack, Title) and (2) these
chemical entities are useful in sizing compositions that coat glass fibers
(Mack 3:7–8), plus the absence of any objective evidence of non-
obviousness, the selection of an appropriate amount of Mack’s siloxane
compound for inclusion in a sizing composition such as Puckett’s sizing
composition appears to be no more than a matter of routine experimentation
for a person having ordinary skill in the art. Thus the claimed composition
would have been obvious in view of Puckett and Mack alone.
The Examiner nevertheless turns to a known sizing composition
containing a siloxane as a curing agent––Fahey––for the siloxane content
that a person having ordinary skill in the art would have used in a sizing
composition. The Examiner finds Fahey’s range of about 0.5 to about 2.0
weight percent of the aqueous sizing composition corresponds to about 1.5
to 20 weight percent of the non-aqueous component of the sizing
composition refers to the solids in the composition. Ans. 13–14. The
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Examiner’s finding is supported by the record. Fahey 10:1–6. Appellant
does not provide an alternative calculation of weight percent of siloxane
taught by Fahey. See generally Appeal Br.; Reply Br. Instead, Appellant
argues Fahey’s siloxane amount is for a preferred siloxane, gamma-
methacryloxypropyltrimethoxysilane, which is neither aminofunctionalized
nor oligomeric. Reply Br. 2. Appellant’s representative’s position at oral
hearing is that Fahey’s disclosure regarding the siloxane content cannot be
extended beyond Fahey’s specific chemical entity. Tr. 9.
Appellant’s argument is not persuasive of error because in a
determination of obviousness, a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the art.
Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That
the [prior art] patent discloses a multitude of effective combinations does not
render any particular formulation less obvious.”). That Fahey discloses a
preferred siloxane does not limit Fahey’s teaching to that preferred siloxane.
Appellant’s argument that a skilled artisan would not expect the same
coupling agent effectiveness results for a non-aminofunctional non-
oligomeric siloxane for an aminofunctional oligomeric siloxane (Reply Br.
2) also is not persuasive of error because it is not supported by objective
evidence. It is well settled that arguments of counsel cannot take the place of
factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135,
139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
Regarding Appellant’s argument distinguishing Fahey’s sizing
composition on the basis of its starch content, the Examiner finds Fahey
discloses a relative amount of siloxane to starch that overlaps Puckett’s
relative amount of siloxane to starch. Ans. 15. Appellant does not directly
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respond to the Examiner’s rationale regarding Fahey’s proportion of
siloxane to starch, but maintains Fahey’s preferred siloxane chemical entity
is so different that a person having ordinary skill in the art considering the
quantity of Mack’s aminofunctional oligomeric siloxane chemical entity to
add to a sizing composition would find Fahey’s instructions irrelevant.
Reply Br. 3.
The problem with Appellant’s argument is that selecting the
appropriate amount of a known functional component in a sizing
composition, in this case, the amount of a siloxane coupling agent, would
have been a matter of routine experimentation for a person having ordinary
skill in the art. In In re Aller, 220 F.2d 454, 456 (CCPA 1955), the court set
forth the rule that the discovery of an optimum value of a variable in a
known process is normally obvious (experimentation to find optimum
conditions was “no more than the application of the expected skill of the
chemical engineer.”). Exceptions to this general rule include where the
parameter optimized was not recognized to be a result effective variable, In
re Antonie, 559 F.2d 618, 621 (CCPA 1977), and where the results of
optimizing a variable, which was known to be result effective, were
unexpectedly good. In re Waymouth, 499 F.2d 1273, 1276 (CCPA 1974).
The Examiner finds Fahey teaches curing agents, including siloxanes,
enable glass fibers to adhere to a starch coating imparting improved
moisture-resistance to the finished product. Final Act. 4–5 (citing Fahey
7:46–49). The Examiner’s finding is supported by the evidence cited in this
Appeal record. Fahey 7:46–52. Thus, the amount of siloxane curing agent in
a sizing composition is a recognized result-effective variable. See In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
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Application 14/205,798
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recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”).
When patentability is predicated upon a change in a result-effective
variable, the burden is on Appellant to establish with objective evidence that
the change is critical, i.e. it leads to a new unexpected result. See In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454,
456 (CCPA 1955). At oral hearing, Appellant’s representative argues that “it
was a significant difference to go from the results obtained with the
essentially three-component sizing to the results obtained with the
essentially four-component sizing where you’re adding not only a silane but
also a siloxane.” Tr. 8. However, Mack explicitly teaches adding the
disclosed aminofunctional oligomeric siloxanes to sizing compositions.
Moreover, Appellant does not direct us to any objective evidence of non-
obviousness in this record. Accordingly, we find the preponderance of the
evidence supports the Examiner’s rejection of claim 1, along with claims 3–
9, 12–17, and 19–23, as unpatentable over the combination of Puckett and
Mack in further view of, or as evidenced by, Fahey.

Double Patenting
The Examiner rejects claims 1, 3–6, 16, 17, 22, and 23 as being
unpatentable on the ground of obviousness-type double patenting over
Puckett ’641’s claim 22 in view of Mack and Fahey. Ans. 3. The Examiner
finds Puckett ’641’s claim 22 recites the sizing composition, but does not
specify the addition of aminofunctional oligomeric siloxane. Id. The
Examiner determines it would have been obvious to a person having
ordinary skill in the art to use the aminofunctional oligomeric siloxane of
Mack for the advantageous properties of heightened boiling point, increased
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flash point, and reduced vapor pressure, in the amounts taught by Fahey for
including a siloxane as a coupling agent in a sizing composition, which
amounts overlap the claimed amount. Id. at 4.
Appellant argues the Examiner’s double patenting rejection is in error
because the Examiner incorrectly finds the amount of siloxane taught by
Fahey includes “any siloxane known in the art” including the claimed
aminofunctional oligomeric siloxane. Reply Br. 4 (quoting Ans. 12). As
discussed above in connection with the prior art rejection of claim 1, we are
not persuaded by Appellant’s argument that a person having ordinary skill in
the art would not have understood Fahey’s teaching regarding the amount of
coupling agent in a sizing composition applies to any known siloxane. Based
on the Appeal record, we also find it would have been a matter of routine
experimentation for a person having ordinary skill in the art of sizing
compositions to select Mack’s siloxane in an appropriate amount for a sizing
composition. Accordingly, we likewise affirm the Examiner’s double
patenting rejection for the same reasons.
CONCLUSION
On this record and for the above reasons, we affirm the Examiner’s
rejections of claims 1, 3–9, 12–17, and 19–23. Because our affirmance is
based on findings and explanations which differ from those of the Examiner,
we denominate the above-listed grounds of rejection as new grounds of
rejection pursuant to our authority under 37 C.F.R. § 41.50(b). See, e.g., In
re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011); In re Leithem, 661
F.3d 1316, 1319 (Fed. Cir. 2011).

Appeal 2019-005940
Application 14/205,798
10
DECISION
The Examiner’s decision is affirmed and we denominate the above-
listed grounds of rejection as new grounds of rejection.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/ Basis Affirmed Reversed
1, 3–9, 12–
17, 19–23 103(a) Puckett, Mack, Fahey
1, 3–9, 12–
17, 19–23
1, 3–6, 16,
17, 22, 23
Doubling Patenting
Puckett ’641 claim 22,
Mack, Fahey
1, 3–6, 16,
17, 22, 23
Overall
Outcome
1, 3–9, 12–
17, 19–23

AFFIRMED; 37 C.F.R. § 41.50(b)