Ex Parte Brocke et alDownload PDFPatent Trials and Appeals BoardApr 11, 201914268231 - (D) (P.T.A.B. Apr. 11, 2019) Copy Citation 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 2 Appeal2017-007567 Application 14/268,231 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. 3 Appeal2017-007567 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 4 Appeal2017-007567 Application 14/268,231 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 5 Appeal2017-007567 Application 14/268,231 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 6 Appeal2017-007567 Application 14/268,231 "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. 7 Appeal2017-007567 Application 14/268,231 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 8 Appeal2017-007567 Application 14/268,231 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 9 Appeal2017-007567 Application 14/268,231 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. 10 Appeal2017-007567 Application 14/268,231 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 11 Copy with citationCopy as parenthetical citation