Ex Parte Quantrille et al

Patent Trial and Appeal BoardMar 15, 2016

13225661 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/225,661 09/06/2011 Thomas E. Quantrille 22907 7590 03/17/2016 BANNER & WITCOFF, LTD. 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 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. 002018.00035 2035 EXAMINER RODD, CHRISTOPHER M ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 03/17/2016 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): eofficeaction@bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS E. QUANTRILLE and LEWIS A. SHORT Appeal2014-005423 Application 13/225,661 Technology Center 1700 Before TERRY J. OWENS, CATHERINE Q. TIMM, and AVEL YN M. ROSS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 3, 5, 8-11, and 14. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The Appellants claim a polymeric composite material. Claims 1 and 9 are illustrative: 1. A polymeric composite material formed by copolymerizing polymer precursors, oligomers, or crosslinking agents with functionalized silicon carbide comprising silicon carbide whiskers covalently bonded to a coupling agent having at least one organofunctional moiety. Appeal2014-005423 Application 13/225,661 9. A polymeric composite material formed by copolymerizing polymer precursors, oligomers, or crosslinking agents with functionalized inorganic whiskers comprising inorganic whiskers covalently bonded to a coupling agent having at least one organofunctional moiety. Kim Murata Kambe Mori (as translated) The References us 4,992,325 us 5,942,205 US 6,881,490 B2 JP 62-113800 A Feb. 12, 1991 Aug. 24, 1999 Apr. 19, 2005 May 25, 1987 Silquestâ„¢ A-1100, MOMENTIVE PERFORMANCE MATERIALS INC. TECHNICAL DATA SHEET (undated) (hereinafter Silquest). The Rejections The claims stand rejected as follows: claims 1, 3, 5, 8-11, and 14 under 35 U.S.C. Â§ 102(b) over Mori as evidenced by Silquest, claims 1, 3, 5, and 8 under 35 U.S.C. Â§ 103 over Kim in viev,r ofKambe and claims 9-11 and 14 under 35 U.S.C. Â§ 103 over Murata in view ofKambe as evidenced by Silquest. OPINION We reverse the rejection under 35 U.S.C. Â§ 102(b) and affirm the rejections under 35 U.S.C. Â§ 103. Rejection under 35 U.S. C. Â§ 102(b) "Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). 2 Appeal2014-005423 Application 13/225,661 We need address only the independent claims (1 and 9). Those claims are in product-by-process form. The patentability of a claim in product-by- process form is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process."). Whether a rejection is under 35 U.S.C. Â§ 102 orÂ§ 103, when the Appellants' product and that of the prior art appear to be identical or substantially identical, the burden shifts to the Appellants to provide evidence that the prior art product does not necessarily or inherently possess the relied-upon characteristics of the Appellants' claimed product. See In re Fitzgerald, 619 F .2d 67, 70 (CCP A 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974). The reason is that the Patent and Trademark Office is not able to manufacture and compare products. See Best, 562 F.2d at 1255; In re Brown, 459 F.2d 531, 535 (CCPA 1972). Mori makes fiber-reinforced resin composite materials by treating SiC whiskers with a silane coupling agent, mixing the treated whiskers with a matrix resin, and curing the mixture (pp. 2-3, 6-7). "[T]he SiC whiskers treated with a silane coupling agent possess improved interfacial wettability with a matrix resin and chemically bond with it, thereby forming a strongly bonded structure" (p. 5). The Examiner asserts that the following portions of the Appellants' Specification indicate that Mori' s crosslinking of a matrix resin with functionalized SiC whiskers is functionally equivalent to the Appellants' 3 Appeal2014-005423 Application 13/225,661 copolymerization of functionalized SiC whiskers with polymer precursors, oligomers or crosslinking agents (Ans. 3-5): In some aspects, silicon carbide (particulate or whiskers) is surface-treated to render it receptive to covalent bonding with a coupling agent. . . . The coupling agent also contains one or more free organofunctional groups, such that the union of the surface-treated silicon carbide and coupling agent forms functionalized silicon carbide. This functionalized silicon carbide can be chosen specifically to be compatible with and have high affinity for the polymer matrix to which it will be added. In some embodiments, the organofunctional groups are covalently bonded to a polymer matrix, e.g., by reacting the functionalized silicon carbide with polymeric materials to cause crosslinking, or by co-polymerizing the functional silicon carbide together with polymer precursors. [i-fi-f 5---6] In another aspect, inorganic whiskers are surface-treated to render them receptive to a covalently bonded coupling agent. . . . [T]he coupling agent possesses at least one organofunctional group. The organofunctional group may be bonded to a polymer matrix, e.g., by reacting the functionalized inorganic material with polymer materials to cause crosslinking, or by co-polymerizing the functionalized inorganic material with polymer precursors. [i-f 7] Those portions of the Appellants' Specification do not indicate that crosslinking and copolymerization are functionally equivalent but, rather indicate that they are alternatives. The Appellants' claims require the co po 1 ymerizati on al temati ve. The Examiner has not established that Mori' s product made by crosslinking a matrix resin with functionalized inorganic whiskers is identical or substantially identical to the Appellants' product made by 4 Appeal2014-005423 Application 13/225,661 copolymerizing functionalized inorganic whiskers with polymer precursors, oligomers or crosslinking agents. The Examiner, therefore, has not established a prima facie case of anticipation by Mori of the Appellants' claimed polymeric composite material. 1 Rejections under 35 U.S.C. Â§ 103 The Appellants argue the claims as a group (App. Br. 7-10). We therefore limit our discussion to one claim, i.e., claim 9. Claims 1, 3, 5, 8, 10, 11, and 14 stand or fall with that claim. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012). Kambe discloses polymeric composite materials which include a monomer/polymer component, inorganic particles, and linker compounds that bridge the inorganic particles and the monomer/polymer. In the case of monomer units being joined to the linker compound, a polymer is formed with the formation of the composite. For simplicity in notation, the monomer/polymer unit joined with the linker and assembled into the composite will be referred to generally as a polymer, although it is recognized that in some cases the unit can be a monomer or polymer, such as a dimer, trimer or larger polymer structures. [col. 5, 11. 18-28] The linker compounds have two or more functional groups. One functional group of the linker is suitable for chemically bonding to the inorganic particles. Chemical bonding is considered to broadly cover bonding with some covalent character with or without polar bonding .... [col. 5, 11. 39--43] 1 Consequently, contrary to the Examiner's assertion (Ans. 3), the Appellants need not provide evidence of difference between Mori' s and the Appellants' products. See Thorpe, 777 F.2d at 697; Best, 562 F.2d at 1255. 5 Appeal2014-005423 Application 13/225,661 [T]he inorganic particles can be present during the polymerization process such that the functionalized inorganic particles are directly incorporated into the polymer structure as it is formed. [col. 5, 11. 59---62] The inorganic particles generally include ... metal/metalloid carbides .... [col. 6, 11. 16-21] The linker molecules surface modify the inorganic particles, i.e., functionalize the inorganic particles. [col. 6, 11. 40-41] The linker compound is a multifunctional compound, for example, a bifunctional compound, that chemically bonds to both the inorganic particle and the polymer. [col. 7, 11. 51-54] The inorganic particles can be bonded through the linker compound into the polymer structure, or the particles can be grafted to polymer side groups. [col. 8, 11. 11-13] [A] composite structure 112 is shown in FIG. 4 in which the polymerization takes place in the presence of the surface modified inorganic particles. The particles become an integral part of the polymer structure. . . . [T]he monomers can include functional groups that bond to just linker molecules and not to other monomers. In such an alternative structure, the surface modified inorganic particles are integral to the formation of a polymer structure in which the inorganic particles and linkers function as repeat units within the polymer. [col. 9, 1. 66 - col. 10, 1. 18] The frame of the linker supporting the functional groups is generally an organic compound, although it may also include silyl and/or siloxy moieties. [col. 13, 11. 7-9] The Appellants assert, regarding the rejection over Kim and Kambe, that "neither [of the] references teaches or suggests a polymeric composite material formed by copolymerizing polymer precursors, oligomers, or 6 Appeal2014-005423 Application 13/225,661 crosslinking agents with functionalized SiC whiskers" (App. Br. 7-8) and, with respect to the rejection over Murata and Kambe, that "[n]one of Murata, Kambe, and Silquest describes or suggests a polymeric composite material formed by copolymerizing polymer precursors, oligomers, or crosslinking agents with functionalized inorganic whiskers" (App. Br. 10). Those assertions are not well taken in view of Kambe' s above-stated disclosures that the functionalized inorganic particles can bond covalently to monomers to form a polymer comprising repeat units formed from the functionalized inorganic particles (col. 5, 11. 18-20, 59---62; col. 8, 11. 11-13; col. 10, 11. 14--18). Accordingly, we are not persuaded of reversible error in the rejections under 35 U.S.C. Â§ 103. DECISION/ORDER The rejection of claims 1, 3, 5, 8-11, and 14 under 35 U.S.C. Â§ 102(b) over Mori as evidenced by Silquest is reversed. The rejections under 35 U.S.C. Â§ 103 of claims 1, 3, 5, and 8 over Kim in view ofKambe and claims 9-11 and 14 over Murata in view of Kambe as evidenced by Silquest are affirmed. It is ordered that the Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7