Ex Parte Shooshtari

Patent Trial and Appeal BoardSep 27, 2012

11799903 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/799,903 05/03/2007 Kiarash Alavi Shooshtari 7781 7730 29602 7590 09/27/2012 JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON, CO 80162-5005 EXAMINER HUHN, RICHARD A ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 09/27/2012 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 KIARASH ALAVI SHOOSHTARI ____________________ Appeal 2011-005786 Application 11/799,903 Technology Center 1700 ____________________ Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and CATHERINE Q. TIMM, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision to reject claims 1-8 and 10 under 35 U.S.C. § 103(a) over Chen1 in view of Yokota2.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 Chen et al., US 6,699,945 B1, patented Mar. 2, 2004. 2 Yokota et al., US 2005/0014925 A1, pub. Jan. 20, 2005. Appeal 2011-005786 Application 11/799,903 2 We REVERSE. The claims are directed to an aqueous binding composition for binding a fibrous material. The composition includes a water-soluble Michael adduct crosslinking agent and a polyamic acid. Claim 1 is illustrative: 1. An aqueous binding composition for a fibrous material comprising (a) a water-soluble Michael adduct crosslinking agent having reactive hydroxyl end groups formed by the addition reaction of (i) a Michael acceptor compound having alpha-beta unsaturation attached to an electron-withdrawing group, and (ii) a nucleophilic compound serving as a Michael donor capable of reaction with said Michael acceptor, and (b) a polyamic acid having a molecular weight of at least 250 that is capable of undergoing an esterification crosslinking reaction with said water- soluble Michael adduct crosslinking agent when heated. (Claims App. at Br. 9 (indenting added).) 3 The provisional obviousness-type double patenting rejection over claims 1-51 of U.S. Application 11/799,904 is moot. Application 11/799,904 was abandoned on January 26, 2012. Appeal 2011-005786 Application 11/799,903 3 OPINION The Examiner relies upon Chen as teaching an aqueous binding composition for a fibrous material including the required water-soluble Michael adduct crosslinking agent (Ans. 4-5). Chen reacts the crosslinking agent with a polycarboxylic acid. The Examiner acknowledges that Chen does not teach the required polyamic acid and relies upon Yokota as evidence that a person of ordinary skill would have been motivated to substitute polyamic acid for the polycarboxylic acid taught by Chen in order to improve thermal moldability and toughness (Ans. 5-6). The question is whether a preponderance of the evidence supports the Examiner’s finding of a suggestion to combine. We determine that it does not. Chen is directed to a formaldehyde- free binder for use in glass fiber manufacturing (Chen, col. 1, ll. 7-8). The binder is formed from a co-binder solution formed by crosslinking a polyacid monomer or oligomer with a polyol and further admixing with polycarboxylic acid (e.g., polyacrylic acid) (Chen, col. 3, ll. 45-56). The only polycarboxylic acid specifically described by Chen is a phosphite terminated polyacrylic acid (Chen, col. 4, ll. 44-47). According to Chen, the co-binder solution is typically applied to glass fibers and heated to dry and cure (crosslink) the co-binder (Chen, col. 7, ll. 1-10). Typically, the binder solution is applied to the glass fibers as the glass fibers are produced, i.e., spun from a spun melt and deposited onto a conveyor (Chen, col. 7, ll. 11-41). The finished fibrous glass mat containing the binder may be used as a thermal or acoustical insulation product, a Appeal 2011-005786 Application 11/799,903 4 reinforcement for a subsequently produced composite, or other suitable glass fiber product (Chen, col. 8, ll. 5-10). Yokota discloses a polyamic acid oligomer useful as a molding material such as a matrix resin of a composite material, and as a functional material such as an insulating material and a heat resistant adhesive (¶ [0002]). Yokota teaches impregnating fibers with a solution of the oligomer, stacking the prepregs in layers, molding, and curing (Yokota, PP [0065-67]). While Yokota states that the polyamic acid oligomer exhibits heat resistance, toughness, and excellent solubility (Yokota, ¶ [0013]), those properties are for the cured oligomer itself and not for a polyamide acid reacted with a polyacid and polyol as taught by Chen. Moreover, as pointed out by Appellant, Yokota discloses a polyamic acid oligomer useful as a composite material, not a binder (Br. 4-5). Appellant contends that binders and matrix materials have different functions and one does not suggest the other (id.). Appellant’s Specification discloses that “[f]iberglass binders used in the present sense should not to be confused with matrix resins” (Spec. 2:5- 6). According to the Specification, composite matrix resins act to fill the entire interstitial space between fibers and result in a dense, fiber reinforced product where the matrix must translate the fiber strength properties to the composite. Binder resins, on the other hand, “as used herein are not space- filling, but rather coat only the fibers, and particularly the junctions of fibers.” (Spec. 2: 9-10.) The fact that Chen suggests using the binder-coated glass fiber mat of that reference in a subsequently produced composite provides evidence that binders and matrix resins were understood to have different functions. Appeal 2011-005786 Application 11/799,903 5 Given the differences in chemistry and function between the compositions of Chen and Yokota, we determine that, on balance, the evidence favors the position of Appellant. A preponderance of the evidence does not support a finding that there was a suggestion to select polyamic acid as the polycarboxylic acid of Chen. CONCLUSION We do not sustain the Examiner’s rejection. DECISION The Examiner’s decision is reversed. REVERSED cam