Ex Parte Hebert et al

Patent Trials and Appeals Board

Jun 14, 2019

12637879 - (D) (P.T.A.B. Jun. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/637,879 12/15/2009
32692 7590 06/18/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Larry S. Hebert
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.
64916US005 4118
EXAMINER
SHAH,SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/18/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY S. HERBERT, WAIYONG JING, and
MICHAEL D. SW AN 1
Appeal2017-008614
Application 12/637,879
Technology Center 1700
Before BEYERL YA. FRANKLIN, LINDA M. GAUDETTE, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as 3M Company and its
affiliate 3M Innovative Properties Company. Appeal Br. 2.
Appeal2017-008614
Application 12/637,879
Appellants request our review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims 1, 4--9, and 11. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth
below (with text in bold for emphasis):
1. A fiber reinforced resin matrix composite laminate comprising:
a) at least one layer of fiber reinforced resin matrix comprising a cured resin
matrix; and
b) a surfacing construction bound to the cured resin matrix and forming a
surface of the laminate, comprising:
i) at least one barrier layer, wherein the barrier layer comprises at least
one of polyethylene, polyurethane, polycarbonate and polyimide and is
substantially impermeable to moisture, oxygen, and an organic solvent
selected from methylene chloride, benzyl alcohol and gasoline; and
ii) at least one cured adhesive layer derived from high temperature
cure adhesive comprising a dicyandiamide-cured epoxy adhesive;
wherein at least one cured adhesive layer is directly bound to the cured resin
matrix and
wherein at least one cured adhesive layer is directly and continuously bound
to at least one barrier layer; and
wherein the barrier layer(s) have a composition different from that of the
cured adhesive layer(s), the barrier layer(s) have a composition different from that of
the cured resin matrix, and the cured adhesive layer(s) have a composition different
from that of the resin matrix;
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Application 12/637,879
wherein the high temperature cure adhesive cures in less than 6 hours at a
temperature of greater than 180 °C and fails to cure in 48 hours at a temperature of
less than 25 °C.
The Examiner relies on the following prior art references as evidence of
unpatentability:
Byma US 2004/0235376 Al Nov. 25, 2004
Koch US 6,439,550 B 1 Aug. 27, 2002
Egan US 2006/0101758 Al May 18, 2006
Cedar leaf us 5,470,413 Nov. 28, 1995
Wevers US 2005/0106965 Al May 19, 2005
Wilfong us 5,262,232 Nov. 16, 1993
Kennedy US 2005/0238872 Al Oct. 27, 2005
Rhee US 2005/0186376 Al Aug. 25, 2005
THE REJECTIONS
1. Claims 1 and 8-9 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Byma in view of Koch and further in view of Egan.
2. Claims 4--5 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Byma in view of Koch, Egan and further in view of
Cedarleaf.
3. Claim 6 is rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable
over Byma in view of Koch, Egan and further in view of W evers.
4. Claim 7 is rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable
over Byma in view of Koch, Egan and further in view of Wilfong.
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Appeal2017-008614
Application 12/637,879
5. Claims 8 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Byma in view of Koch, Egan, and further in view of
Kennedy.
6. Claims 8 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Byma.
ANALYSIS
An aspect of the Examiner's obviousness analysis relies upon the premise that
one of ordinary skill would have substituted the polyurethane adhesive in Byma with
the epoxy resin containing dicyandiamide disclosed in Koch because Koch discloses
that epoxy adhesive and polyurethane adhesive are "equivalent
and interchangeable." Final Act. 4.
Appellant disagrees and submits that Koch merely discloses that
polyurethanes and epoxies are suitable within the context of Koch. Appeal Br. 6
(citing Koch, col. 5, 11. 38--47). Appellants state that Koch never represents that
polyurethanes and epoxies are either "equivalent" or "interchangeable." Appeal Br.
5---6. It is noted that the context of Koch involves metal to rubber adhesives. Koch,
col. 5, 1. 38.
In response, the Examiner states that Koch discloses, in column 5, 11. 40--41,
that applicable adhesives can be epoxy adhesives or polyurethane adhesives, and
therefore, Koch teaches equivalence or interchangeability of using epoxy or
polyurethane adhesives. Ans. 3. The Examiner also states that Koch also teaches
that the epoxy adhesives include those comprising dicyanamide. Id. ( citing Koch,
col. 6, 1. 11 ).
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Appeal2017-008614
Application 12/637,879
In reply, Appellants argue that such reasoning cannot be divorced from the
context of the primary reference of Byma, in which a polyurethane adhesive is an
example of an "elastomeric thermosetting liquid resin" useful according to the
application of Byma. Reply Br. 3 ( citing Byma ,r 0019). Appellants argue that
nothing in Byma, Koch, or any other applied reference shows that an epoxy
adhesive is an "elastomeric thermosetting liquid resin." Id. Appellants therefore
submit that epoxy adhesives and polyurethane adhesives cannot be deemed to be
"equivalent and interchangeable" in view of Byma, on which the alleged substitution
is applied. Id.
We are persuaded by this line of argument. Koch teaches what kinds of
adhesives are appropriate to use within the context of Koch, among which include
epoxy adhesives or polyurethane adhesives (as discussed, supra). As pointed out by
Appellants, Byma teaches that elastomeric thermosetting liquid resins (such as
polyurethane adhesives) are applicable for the application according to Byma. Byma
,I 0019; Reply Br. 3.
On this record, the Examiner has not adequately shown that the epoxy resin
containing dicyandiamide of Koch is "equivalent and interchangeable" with
elastomeric thermosetting liquid resins (such as polyurethane adhesives) of Byma.
In order to rely on equivalence as a rationale supporting an obviousness rejection~
the equivalency must be recognized in the prior art. ln re Rziff, 256 F.2d 590 (CCPA
1958). In the instant case, the Examiner has not directed us to such evidence. vVe
thus reverse on this basis alone, and need not reach the other issues discussed in the
record.
DECISION
Each rejection is reversed.
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Appeal2017-008614
Application 12/637,879
ORDER
REVERSED
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