Ex Parte Hebert et alDownload PDFPatent Trials and Appeals BoardJun 14, 201912637879 - (D) (P.T.A.B. Jun. 14, 2019) Copy Citation 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; 2 Appeal2017-008614 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. 3 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 ). 4 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. 5 Appeal2017-008614 Application 12/637,879 ORDER REVERSED 6 Copy with citationCopy as parenthetical citation