Ex Parte Ashton et al

Patent Trial and Appeal BoardSep 27, 2012

10175964 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/175,964 06/20/2002 Larry J. Ashton 16111.5 1204 71341 7590 09/27/2012 KIRTON & MCCONKIE 60 EAST SOUTH TEMPLE SUITE 1800 SALT LAKE CITY, UT 84111 EXAMINER GRAY, JILL M ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 09/27/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LARRY J. ASHTON, CRAIG B. SIMPSON, REX W. KAY, TROY L. WHITE, and MIKE GLEN ALLMAN ____________ Appeal 2011-008001 Application 10/175,964 Technology Center 1700 ____________ Before FRED E. McKELVEY, ROMULO H. DELMENDO, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. Per curiam. REQUEST FOR INFORMATION Pursuant to Rule 41.50(d) [37 CFR § 41.50(d)] and Rule 105(a)(1) [37 CFR § 1.105(a)(1)], we request that Rocky Mountain Composites, Inc. (“Appellant”), address several matters. Appeal 2011-008001 Application 10/175,964 2 Matters to be addressed 1. On page 13:9-12 of the Specification, Appellant mentions “[i]n one embodiment, the resin may remain solid at temperatures up to about 120ºF. The resin may include different epoxies and hardeners, such as phenolics and bisphenols that become liquid at a temperature of about 160 ºF.” Insofar as the panel is aware, the Specification contains no written description of a specific embodiment of the resin. Appellants are requested to advise the panel whether the resins were known in the art and, if so, cite prior art literature known to Appellant which could confirm that the resins were known in the art. 2. On page 13:13-14 of the Specification, Appellant states: “various other epoxies are presently available that are solid or semi- solid at ambient temperatures and are suitable for composite material 100 applications.” Appellants are requested to identify epoxy resins that were “presently available” and to cite prior art literature known to Appellant describing the “presently available” epoxy resins. 3. In ¶ 10 of the Strong Declaration (dated 5 August 2009), Strong states: “[s]ometimes [i] the solvent will become part of the crosslinking process (thus forming a part of the finished composite material) but [ii] in other systems the solvent is simply removed by evaporation after the liquefied resin solution has fully wetted the fibers in the tow.” The panel understands that a composite material can be made using either procedures [i] and [ii]. Appellant is requested to explain what difference, if any, exists between (1) the Appeal 2011-008001 Application 10/175,964 3 composite material of Claim 1 on appeal and a composite material made using procedure [ii] and why any difference would be significant. 4. Young ‘153 describes the use of a “binder . . . of a thermosetting type” and a “binder [that] is thermoplastic”. Col. 5:59-60. Suitable thermosetting binders are identified as “epoxy resins.” Col. 5:61-62. Selection of the resin is said to depend on various factors. Col. 5:68-70. Appellant is requested to address whether the thermosetting resins or the thermoplastic resins mentioned by Young ‘153 are “solid or semi-solid” resins within the meaning of “solid or semi-solid” as used in the Specification, e.g., page 13:8-9. 5. Appellant is requested to address whether the “[l]iquid uncured thermosetting epoxy resin” described in col. 5:32-71 of Young ‘322 is a “solid or semi-solid” resin within the meaning of the phrase “resin that is solid or semi-solid at ambient temperatures” appearing in Claim 1 on appeal. If not, why? 6. Appellant is requested to address whether the “suitable epoxy resin” described in Middelman at col. 9:16-32 is a “solid or semi-solid” resin within the meaning of the phrase “resin that is solid or semi-solid at ambient temperatures” appearing in Claim 1 on appeal. If not, why? 7. Appellant relies on a long-felt need in support of its case for non-obviousness. Appellant is requested to state whether the invention of Claim 1 on appeal has been commercialized, and if so, Appeal 2011-008001 Application 10/175,964 4 the extent to which it has been commercialized vis-à-vis competing composite materials. 8. Appellant is requested to state what meaning one skilled in the art would ascribe to the term “semi-solid” as used in Claim 1 on appeal. Time for response The time for responding to this REQUEST FOR INFORMATION is set to expire on Wednesday, 14 November 2012. Failure to timely comply with this REQUEST FOR INFORMATION may result in the sua sponte dismissal of the appeal. Rule 41.50(d), last sentence. bar