Ex Parte Brocke et al

Patent Trials and Appeals Board

Apr 11, 2019

14268231 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/268,231 05/02/2014 Stephan Brocke
47988 7590 04/11/2019
Walter Ottesen, P.A.
POBOX4026
GAITHERSBURG, MD 20885-4026
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P2011-151 2479
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
04/11/2019 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 STEPHAN BROCKE, HUBERT GOESER, and
ANDRE KUCHARCZYK
Appeal2017-007567
Application 14/268,231
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In our Decision, we refer to the Specification filed May 2, 2014 ("Spec.");
the Non-Final Office Action dated August 10, 2016 ("Non-Final Act."); the
Appeal Brief filed December 30, 2016 ("App. Br."); the Examiner's Answer
dated February 14, 2017 ("Ans."); and the Reply Brief filed April 12, 2017
("Reply Br.").
2 Appellant is the Applicant, ContiTech Antriebssystemem Gmbh, identified
in the Appeal Brief as the real party in interest. App. Br. 2.
Appeal2017-007567
Application 14/268,231
The claims on appeal are directed to methods of treating a tensile member
for fabricating a belt. App. Br. 33-34 (Claims App.). The belts in question are
used in drive technology and are known as drive belts or power transmission belts.
Spec. 1, 11. 24--26. The belts may also be used as transport belts or conveyor belts.
Spec. 2, 11. 5-7. Claims 1 and 2, reproduced below from the Claims Appendix
with key limitations italicized, illustrate the claimed subject matter:
1. A method of treating a tensile member for fabricating a belt
compnsmg:
wetting a tensile member having voids and being in cord
construction with an overall treatment mixture including at least a
prepolymer, a crosslinker, and at least one of an inert solvent or
dispersant in a single treatment stage, thereby filling at least some of
the tensile member voids with the overall treatment mixture to form a
treated tensile member;
drying the treated tensile member to form a dried tensile
member; and,
embedding the dried tensile member in a belt body composed
of a polymeric material having elastic properties;
the belt body having a top ply as belt backing and a
substructure having a power transmission zone; and,
the overall treatment mixture forming a crosslinked polymer
having both a mechanical attachment to the tensile member and an
adherent bond with the belt body,
wherein a partial crosslinking reaction occurs while the overall
treatment mixture is penetrating into the tensile member voids.
2. A method of treating a tensile member for fabricating a belt
compnsmg:
wetting a tensile member having voids and being in cord
construction with an overall treatment mixture including at least a
prepolymer, a crosslinker, and at least one of an inert solvent or
dispersant in two or more treatment stages, thereby filling at least
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some of the tensile member voids with the overall treatment mixture to
form a treated tensile member;
drying the treated tensile member to form a dried tensile
member; and,
embedding the dried tensile member in a belt body composed
of a polymeric material having elastic properties;
the belt body having a top ply as belt backing and a
substructure having a power transmission zone; and,
the overall treatment mixture forming a crosslinked polymer
having both a mechanical attachment to the tensile member and an
adherent bond with the belt body,
wherein a partial crosslinking reaction occurs while the overall
treatment mixture is penetrating into the tensile member voids.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims on
appeal:
Knox us 3,278,667 Oct. 11, 1966
Brahm et al. us 4,024,307 May 17, 1977
("Brahm")
Sugiura et al. us 4,190,687 Feb.26, 1980
("Sugiura")
Elmer us 4,409,055 Oct. 11, 1983
Knutson US 6,945,891 B2 Sept. 20, 2005
Duke, Jr. et al. US 2011/0129647 Al June 2, 2011
("Duke")
Watanabe 3 JP 2001-226876 A Aug. 21, 2001
3 The rejection is based on a partial machine translation of the reference. Non-
Final Act. 3. In the Answer, the Examiner stated that a complete translation of the
reference "will be made of record when it is received." Ans. 7. The translation
was then entered into the record on March 2, 2017. Appellant acknowledged this
new translation in the Reply Brief. Reply Br. 7. The appeal record does not
indicate that Appellant has petitioned under 3 7 C.F .R. § 1.181 (a) to challenge the
entry of this translation as constituting a new ground of rejection.
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Application 14/268,231
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C. § 103(a):
A. Claims 1, 2, 4, 6, 9, and 11-16 over Duke in view of Knutson and
Watanabe;
B. Claims 2-5 over Duke in view of Knutson and Watanabe, and further
in view of Elmer;
C. Claims 7 and 8 over Duke in view of Knutson and Watanabe, and
further in view of Knox; and
D. Claim 10 over Duke in view of Knutson and Watanabe, and further in
view of either Brahm or Sugiura.
OPINION
Rejection A. Appellant provides separate substantive arguments for
patentability of claims 1 and 2, the only independent claims, over Duke in view of
Knutson and Watanabe. See App. Br. 14--21, 28. Appellant argues that dependent
claims 4, 6, 9, and 11-16 are each patentable over the cited art because they
depend from either claim 1 or claim 2. Id. at 21-27.
Independent claim 1
With regard to claim 1, the Examiner finds the Duke teaches all limitations
of the claim with the exception of (i) the belt body having a top ply as belt backing;
and (ii) a partial crosslinking reaction occurs while the overall treatment mixture is
penetrating into the tensile member voids. Non-Final Act. 3. The Examiner relies
on Knutson to teach the belt body having a top ply as belt backing. The Examiner
finds that the limitation "a partial crosslinking reaction occurs while the overall
treatment mixture is penetrating into the tensile member voids" is satisfied by even
a trace amount of crosslinking reaction. Id. at 4. The Examiner finds that such
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crosslinking naturally occurs in the process disclosed by Duke. Ans. 7-8; see also
Non-Final Act. 4 ("[Crosslinking] reaction progress is conventional in isocyanate
containing reactive solutions because the free isocyanate groups can react with
ambient moisture or other available reactants."). The Examiner cites Watanabe as
evidence that isocyanate groups readily react with humidity in the air, thereby
limiting pot life. Ans. 7-8 (citing Watanabe 2, 11. 1-7). The Examiner finds that
the "partial crosslinking reaction" limitation naturally flows from Duke's method
because such crosslinking naturally occurs in any compound having a limited pot
life, such as mixtures containing reactive free isocyanate groups. Non-Final Act.
4. The Examiner finds that the skilled artisan would have understood such a pot
life limiting reaction to be a crosslinking reaction. Ans. 8.
Appellant argues that the Examiner fails to consider the disclosure of Duke
as a whole, and that such consideration demonstrates that Duke's methods employ
a two-bath process. App. Br. 15. Appellant contends that Duke discloses first
treating a tensile cord with a polyurea-urethane (citing Duke ,r,r 13 and 15), then
flashing off the solvent and subsequently dipping the cord in water ( citing Duke ,r
57). Id.
Appellant's arguments do not persuade us of reversible error in the
Examiner's rejection of claim 1.
Paragraph 57 of Duke teaches dipping the cord in a second dip----a water
bath-in a preferred embodiment. Duke ,r 57. However, for purposes of 35 U.S.C.
§ 103, a reference is prior art for all that it discloses. Symbol Techs., Inc. v.
Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991); see also In re Fritch, 972
F.2d 1260, 1264 (Fed. Cir. 1992) (Explaining that "[i]t is well settled that a prior
art reference is relevant for all that it teaches to those of ordinary skill in the art.").
We consider Duke for all that it teaches and suggests, and do not limit the teaching
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to that of a preferred embodiment. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("[I]n a section 103 inquiry, the 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.").
Duke discloses that crosslinking naturally occurs in the presence of water
"available from ambient moisture present in the solvent and/or air." Duke ,r,r 15,
23. According to Duke, water is the most preferable curative, causing formation of
urea linkages between isocyanate end groups on the prepolymer molecules
(crosslinking). Id. ,r 23. Watanabe is evidence that isocyanate groups in a
treatment liquid or on a cord surface react easily with the humidity in air.
Watanabe ,r 5. Duke's disclosure is not limited to a requirement for two baths, the
second being a water bath, for crosslinking to occur. Rather, Duke broadly
discloses at least some crosslinking of the prepolymer in the presence of ambient
water, even in the solvent.
Claim 1 requires that "a partial crosslinking occurs while the overall
treatment mixture is penetrating into the tensile member voids." App. Br. 33
(Claims App.). According to the Examiner, this limitation "is satisfied by any
amount, even a trace amount, of the crosslinking reaction." Ans. 8. Appellant
does not offer a competing construction, but points to the Specification at 5:30-6:5
as disclosing this limitation. App. Br. 5. During prosecution, an application's
claims are given their broadest reasonable scope consistent with the Specification.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
words used in a claim must be read in light of the specification, as it would have
been interpreted by one of ordinary skill in the art at the time of the invention. Id.
"Partially crosslinking" is not described or defined in the Specification. See
generally Spec. However, the Specification describes a crosslinking reaction that
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"is already starting to occur," and which may later occur "to completion" after a
subsequent drying operation. Spec. 6: 1-5. Consistent with this disclosure, and
with a dictionary definition of the term "partially," the broadest reasonable
interpretation of "partial crosslinking" is an amount of crosslinking that is
"incomplete," "less than total," or "to some extent." See
https://www.dictionary.com/browse/partially?s=t, https://www.merriam-
webster.com/ dictionary/partially. Crosslinking that occurs "while the overall
treatment mixture is penetrating into the tensile member voids" will occur as soon
the tensile member is immersed in the treatment mixture, thus even a very small
amount of crosslinking that occurs when the cord is immersed is sufficient to
satisfy claim 1 's requirement. The claimed partial crosslinking occurs while the
overall treatment mixture is penetrating into the tensile member voids, but need not
occur in the part of the mixture that has penetrated the tensile member voids.
Duke's disclosure of crosslinking as a result of ambient moisture in the solvent or
air meets the claim limitation.
We sustain the Examiner's rejection of claim 1. For the same reasons, and
because Appellant has not argued separately for their patentability, we sustain the
rejection of claims 6, 9, and 11-16 which depend directly or indirectly from claim
1. App. Br. 35-36 (Claims App.).
Independent claim 2
Claim 2 recites "two or more treatment stages," rather than "a single
treatment stage," as recited in claim 1. Id. at 33-34. The Examiner finds that
Duke's disclosure of subsequent overcoat adhesive treatments satisfies the claimed
"two or more treatment stages." Non-Final Act. 5. The Examiner also finds that
claim 2 does not require that the recited overall treatment mixture is used in both
treatment stages. Id.
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Appellant argues that Duke teaches a two-bath process. App. Br. 18-19. As
discussed in detail supra, we disagree. However, we find that Duke's overcoat is
not sufficiently described in the reference for us to conclude that it meets the
limitation of being "an overall treatment mixture including at least a prepolymer, a
crosslinker, and at least one of an inert solvent or a dispersant."
We do not sustain the rejection of claim 2 and its dependent claims 3-5 over
Duke in view of Knutson and Watanabe.
Rejection B. Appellant argues claims 2-5 as a group. We select claim 2 as
representative of the group. Claims 3-5 will stand or fall with claim 2. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner rejects claim 2 over Duke in view of Knutson and Watanabe,
and further in view of Elmer. Non-Final Act. 5-6. Claim 2 differs from claim 1 in
that claim 2 recites "wetting a tensile member having voids ... with an overall
treatment mixture ... in two or more treatment stages." The Specification teaches
that a drying operation is performed between every treatment stage. Spec. 6, 11.
22-23. One of ordinary skill in the art at the time of the invention would have
understood the claim to cover a method in which drying occurs after each of the
two or more treatment stages.
We agree with the Examiner that Elmer teaches that it was known in the art
at the time of the invention to treat a cord multiple times and dry the cord between
each treatment stage, and the Duke and Elmer are drawn to the same purpose of
impregnating tensile members with a treatment mixture in the production of belts.
Ans. 10 (citing Elmer col. 1, 11. 26-50, col. 4, 11. 35-56). It would have been
obvious to the skilled artisan to combine the disclosures of Duke and Elmer by
substituting Elmer's multiple treatments for Duke's single treatment stage. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (obviousness to combine
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references may be based on "the inferences and creative steps that a person of
ordinary skill in the art would employ" in combining prior art).
Appellant argues that Duke teaches a two-bath process. App. Br. 28.
Appellant contends that combining Duke and Elmer would merely duplicate the
two-bath process multiple times. Id.
We find Appellant's argument concerning Duke's disclosure of a two-bath
process unpersuasive for the reasons given supra, regarding Rejection A. Because
Elmer teaches multiple treatments with drying in between treatment steps, we
sustain the rejection of claim 2 and its dependent claims 3-5 over Duke in view of
Knutson, Watanabe, and Elmer.
Rejection C. The Examiner rejects claims 7 and 8 over Duke in view of
Knutson and Watanabe, and further in view of Knox. Non-Final Act. 6. Claim 7
depends from claim 1 and further requires that a diol is used to crosslink the
prepolymer. App. Br. 35 (Claims App.). Claim 8 depends from claim 7 and
further requires butanediol as the crosslinker. Id.
The Examiner finds that Duke discloses a diamine crosslinking agent for the
polyurethane prepolymer. Non-Final Act. 6. The Examiner finds that Knox
teaches diols such as butanediol may be used as an alternative to diamines for
crosslinking polyurethane prepolymers. Id. (citing, e.g., Knox col. 8, 11. 3-7 and
32--42). The Examiner determines that one of ordinary skill in the art at the time of
the invention would have been motivated to use butanediol as an art-recognized
suitable alternative for diamine in Duke's method. We agree.
Appellant merely argues that Knox does not cure the deficiencies of Duke.
App. Br. 29-30.
Claims 7 and 8 depend directly or indirectly from claim 1. We hold supra,
that Duke, in combination with Knutson and Watanabe, satisfies the limitations of
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claim 1. Because Duke has no deficiencies with regard to claim 1, Appellant's
argument is insufficient to rebut the prima facie case of obviousness made by the
Examiner. We sustain the rejection of claims 7 and 8.
Rejection D. Claim 10 depends from claim 1, and further requires:
the individual components of the overall treatment mixture are
initially dissolved and/or dispersed independently of each other
in a solvent or dispersant, respectively, which may be the same
or different, and are then combined at the start of the treatment of
the tensile member to form a still low-viscosity overall treatment
mixture.
App. Br. 35 (Claims App.).
The Examiner finds that Duke in view of Knutson and Watanabe, and
further in view of either one of Brahm or Sugiura teach all limitations of claim 10.
Non-Final Act. 7. The Examiner finds that Brahm and/or Sugiura teach that any
order of mixing the desired components is a suitable alternative, and the selection
of any order of mixing ingredients is prima facie obvious. Id.
Appellant argues that Brahms and Sugiura merely suggest that mixtures may
be combined, and do not cure the deficiencies of Duke. App. Br. 31.
The difference between claim 1 and claim 10 is not merely the order of
mixing the same components, but rather a difference in what the components are.
Duke discloses mixing or dissolving polyurethane prepolymer in a suitable solvent
along with a small or compact, symmetric, diamine curative. Duke ,r 15. We find
no disclosure in Duke or the other cited references that discloses dissolving a
prepolymer in a solvent, separately dissolving a crosslinker in a solvent, and
combining them only at the start of treatment so that the overall treatment mixture
is still low-viscosity.
We do not sustain the rejection of claim 10.
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DECISION
For the above reasons, the rejection of claims 1-9 and 11-16 is affirmed.
The rejection of claim 10 is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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