Ex Parte Koeniger et al

Patent Trial and Appeal Board

Mar 24, 2016

11857469 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111857,469 09/19/2007
43251 7590 03/28/2016
SABIC - 08CU - UL TEM
SABIC Innovative Plastics - IP Legal
ONE PLASTICS A VENUE
PITTSFIELD, MA 01201-3697
FIRST NAMED INVENTOR
Rainer Koeniger
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.
222164-1-US-NP 1942
EXAMINER
SYKES, ALTREV C
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
judith.rowe@sabic-ip.com
usptopatentmail@cantorcolbum.com
gregory.hill@sabic-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER KOENIGER, GLEN DAVID MERFELD,
PRAMEELA SUSARLA, and SAMEET JAIN
Appeal2014-008870
Application 11/857 ,469
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-3, 5-9, 11, 12, and 15-22. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-008870
Application 11/857 ,469
STATEMENT OF CASE
Appellants 1 describe the present invention as relating to a coated
aramid fiber that could be used, for example, in apparel and furnishings.
Spec. i-fi-12--4. Claims 1, 7,2 16, 19, and 20 are the independent claims on
appeal. Claim 1, reproduced below with emphases added to key recitations,
is illustrative of the claimed subject matter:
1. A coated fiber comprising:
(a) an inner fiber consisting of an aramid or combination of
aramids; and
(b) an outer coating consisting of a polyamic acid and an optional
additive selected from the group consisting of thermal stabilizers,
antioxidants, ultraviolet (UV) stabilizers, plasticizers, visual effect
enhancers, colorants, extenders, antistatic agents, catalyst
quenchers, adhesion promoters, fire retardants, flow and leveling
additives, surfactants, pigment dispersion aids, and processing aids
deposited on said inner fiber, wherein the polyamic acid comprises
structural units (I):
wherein R 1 [sic, is] a C2-C 12 aliphatic radical, a C6-Cso cycloaliphatic
radical, or a C6-Cso aromatic radical; R2 is a C1-C20 aliphatic radical,
1 According to the Appellants, the Real Party in Interest is SABIC
INNOVATIVE PLASTICS IP B.V. Appeal Br. 2.
2 Appellants apparently attempt to amend claim 7 via the Appeal Brief.
Appeal Br. 2; 11-12 (Claim Appendix). This amendment has not been
explicitly entered by the Examiner (Ans. generally). See also, 37 C.F.R. §§
41.33(b), 41.37(c)(v)(2). We therefore consider claim 7 as written prior to
the proposed amendments.
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Appeal2014-008870
Application 11/857 ,469
a C2-C20 cycloaliphatic radical, or a C2-C20 aromatic radical; and Y
is hydrogen, or a charge-balancing cation, wherein upon curing the
polyamic acid to form a polyetherimide the coated fiber has
combustion properties similar to or better than an uncoated aramid
fiber.
Appeal Br. 10 (Claim Appendix) (emphases added).
REFERENCES
The Examiner relied upon the prior art below when rejecting the
claims on appeal:
Bolon et al.
(hereinafter "Bolon")
Linde et al.
(hereinafter "Linde")
Park et al.
(hereinafter "Park")
Melquist
Oba et al.
(hereinafter "Oba")
van Beek et al.
(hereinafter "van Beek")
Cardamone et al.
(hereinafter "Cardamone")
us 4,374,972 Feb.22, 1983
us 4,590,258 May 20, 1986
us 5,047,500 Sept. 10, 1991
us 5,189,115 Feb.23, 1993
us 5,348,835 Sept. 20, 1994
US 7,019,062 B2 Mar. 28, 2006
TTC< l"\f\f\l/f\f\'"7~~'"7A A 1 A---- 11 l"\f\f\I
U.:) LVVO/ VV I .J .J I'+ J-\.1 fipL L), LVVO
REJECTIONS
Only claims 1-3, 5-9, 11, 12, and 15-22 are pending. Each of these
claims stands rejected and is on appeal. Appeal Br. 2. In particular, the
Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 1-3, 19, 21, and 22 under
35 U.S.C. § 103 as unpatentable over the combination of Cardamone, Oba,
and Linde. Final Act. 5.
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Appeal2014-008870
Application 11/857 ,469
Rejection 2. The Examiner rejected claims 5 and 6 under 35 U.S.C.
§ 103 as unpatentable over the combination of Cardamone, Oba, Linde, and
van Beek. Id.
Rejection 3. The Examiner rejected claims 15-18 under 35 U.S.C.
§ 103 as unpatentable over the combination of Cardamone, Oba, Linde, and
Park. Id.
Rejection 4. The Examiner rejected claims 7, 8, 11, and 12 under
35 U.S.C. § 103 as unpatentable over the combination of Cardamone, Oba,
and van Beek. Id.
Rejection 5. The Examiner rejected claim 9 under 35 U.S.C. § 103 as
unpatentable over the combination of Cardamone, Oba, van Beek, and
Melquist. Id. at 5---6.
Rejection 6. The Examiner rejected claim 20 under 35 U.S.C. § 103
as unpatentable over the combination of Cardamone, Oba, Bolon, and van
Beek. Id. at 6.
ANALYSIS
Rejection 1. The Examiner rejected claims 1-3, 19, 21, and 22 under
35 U.S.C. § 103 as obvious over Cardamone, Oba and Linde. Final Act. 5. 3
Appellants make two arguments concerning the rejection, and we address
those arguments below. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (citation omitted) ("the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection").
Appellants do not separately argue claims 2, 3, 19, 21, or 22. We therefore
3 The full statements of rejection can be found in the non-final Office Action
of June 07, 2013 (pp. 4--20).
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Appeal2014-008870
Application 11/857 ,469
limit our discussion to claim 1. Claims 2, 3, 19, 21, and 22 stand or fall with
that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Appellants' first argument is that, contrary to the Examiner's position,
Cardamone does not teach application of a polyimide (i.e., the recited
polyamic acid) to an aramid fiber. Appeal Br. 7. Appellants stress that
Cardamone teaches adding aramid fibers to wool to impart greater flame
resistance. Id. We understand Appellants' argument to be that, according to
Cardamone, the purpose of a polymeric acid coating is to add flame
resistance, and there would be no reason to add a polymeric acid to an
aramid fiber because aramid fiber is already flame resistant. For the reasons
explained below, this argument is not persuasive.
Cardamone teaches coating synthetic fibers with a polymeric acid.
See, e.g., Cardamone Abstract, i-f 23; Ans. 3. Cardamone identifies aramids
as synthetic fiber. Cardamone i-f 39; Ans. 2. It also teaches that its
method-use of a polymeric acid coating---can be used with blends of wool
and an aramid. Cardamone i139; Ans. 3.
It would have been obvious to use Cardamone' s method to coat an
aramid (a synethic fiber) with polymeric acid because Cardamone teaches
the coating of synthetic fibers and lists aramid as an example of a synthetic
fiber. Cardamone i-f 39; Ans. 3-5. A person of ordinary skill in the art
would have expected aramids to benefit from the fire resistance of the
polymeric acid coating just like other materials benefit. Cardamone,
Abstract; Ans. 3-5. We agree with the Examiner that any inherent flame
resistance of uncoated aramids does not weigh against this conclusion
because, for example, Cardamone also teaches coating wool with polymeric
acid to increase flame resistance despite wool's inherent flame resistance.
Ans. 3--4.
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Appeal2014-008870
Application 11/857 ,469
Moreover, Claim 1 is broad enough to include aramid fibers coated
with polymeric acid as part of a wool/aramid blend as taught by Cardamone.
Cardamone i-f 39. The preamble of claim 1 uses the word "comprises" and is
open-ended. Spec. i-f 65. The Specification also teaches that its invention's
fibers could be used, for example, in a multicomponent product such as yam.
Spec. i-f 48; Ans. 6. Thus, claim 1 's recited aramid could be used, for
example, in a blend alongside wool. Cardamone's paragraph 39 teaches use
of the polymeric acid coating in precisely such a scenario.
Second, Appellants argue that Cardamone does not address the
problem of dyeing aramid fibers. Appeal Br. 8. Both this and achieving
flame resistance are problems that, according to the Specification, the
claimed invention seeks to address. Spec. i-f 3. This argument fails because
claim 1 is not limited based upon dyeing. Thus, we sustain the Examiner's
first rejection.
Rejections 2---6. Appellants rely upon the arguments above when
addressing the Examiner's other rejections. Thus, we sustain these
rejections for the reasons we discuss above.
DECISION
For the above reasons, the Examiner's decision to reject the appealed
claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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