Ex Parte Vos et al

Patent Trial and Appeal Board

Apr 28, 2016

13416617 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/416,617
101012 7590
Rhodes IP PLC
3090 Electric Rd
Suite F
Roanoke, VA 24018
FILING DATE FIRST NAMED INVENTOR
03/09/2012 Sandra Fritz Vos
05/02/2016
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.
HANAZD-702620 3921
EXAMINER
VO, HAI
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
crhodes@rhodesip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA FRITZ VOS and
THOMAS ARNOLD EBELING
Appeal2014-008705
Application 13/416,617
Technology Center 1700
Before: BRADLEY R. GARRIS, A VEL YN M. ROSS, and
BRIAND. RANGE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 27, 28, 30-34, 36-40, and 42--44. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 In our opinion below, we refer to the Final Office Action appealed from,
filed July 24, 2013 (Final Act.), the Appeal Brief filed April 24, 2014
(Appeal Br.), the Examiner's Answer filed June 9, 2014 (Ans.), and the
Reply Brief filed August 11, 2014.
2 Appellants identify the real party in interest as Hanwha Azdel, Inc. Appeal
Br. 3.
Appeal2014-008705
Application 13/416,617
STATEMENT OF CASE
The claims are directed to a fiber-reinforced thermoplastic composite
material with improved smoke generation, heat release, and mechanical
properties. Spec. i-f 1. Claim 27 is illustrative of the claimed subject matter
and is reproduced below, with the relevant language emphasized:
27. A fiber-reinforced composite material, comprising:
at least one fiber-reinforced thermoplastic core material
comprising a first surface and a second surface, in which the core
material comprises a plurality of discontinuous reinforcing
fibers, dispersed within one or more thermoplastic resins, in an
amount of about 35 wt.% to about 55 wt.% of the thermoplastic
core, the core material comprising a machine direction flexural
modulus that is greater in a middle fiber content range than the
flexural modulus at 3 5 wt.% fiber loading and greater than the
flexural modulus at 55 wt.% fiber loading, in which the core
material comprises a porosity of greater than 0% to about 95%,
wherein the plurality of reinforcing fibers comprise an average
length between about 1/8 inch and about 2 inches; and
wherein, the thermoplastic core material has a maximum
smoke density Ds ( 4 minutes) of less than 200 as measured in
accordance with ASTM E662, a maximum heat release (5
minutes) of less than 65 kW /m2 as measured in accordance with
FAA Heat release test FAR 25.853 (a) Appendix F, Part IV (OSU
65/ 65), and an average total heat release (2 minutes) of less than
65 kW /m2 as measured in accordance with FAA Heat release test
FAR 25.853 (a) Appendix F, Part IV (OSU 65/65); and
wherein the composite material does not include a skin
layer having a limiting oxygen index greater than about 22, as
measured according to ISO 4589.
Claims Appendix at Appeal Br. 13 (italics added).
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Application 13/416,617
REJECTIONS
The Examiner made the following rejections:
A. Claims 27, 28, 30-34, 36-40, and 42--44 stand rejected under 35
U.S.C §102(a) as being anticipated by Raghavendran et al.3
Final Act. 2-3.
B. Claims 27, 28, 30-34, 36-40, and 42--44 stand rejected under 35
U.S.C §102(e) as being anticipated by Raghavendran et al.4
Final Act. 5.
C. Claims 27, 28, 30-34, 36-40, and 42--44 are provisionally
rejected on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1-20 of copending
Application No. 11/784,515. Final Act. 9.
D. Claims 27, 28, 30-34, 36-40, and 42--44 are provisionally
rejected on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1-20 of copending
Application No. 12/002,518. Final Act. 9.
Appellants provide no substantive argument as to the separate
patentability of claims 28, 30-34, 36-40 and 42--44 over what is argued for
claim 27. See Appeal Br. 9-12. We therefore focus our discussion on the
rejections of claim 27 to resolve the issues on appeal.
3 Raghavendran et al., US 2007/0269645 Al, published November 22, 2007
(hereinafter "Raghavendran I").
4 Raghavendran et al., US 2009/0155522 Al, published July 18, 2009
(hereinafter "Raghavendran II").
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Application 13/416,617
OPINION
Rejection A -Anticipation
The Examiner rejects claims 27, 28, 30-34, 36-40, and 42--44 as
being anticipated by Raghavendran I. Final Act. 2. The Examiner finds that
Rag[havendran] [I] teaches a composite sheet that includes at
least one porous core layer and at least one skin covering a
surface of the core layer. The porous core layer comprises a
plurality of discontinuous reinforcing fibers dispersed within one
or more thermoplastic resin in an amount of about 30 wt% to 55
wt% of the thermoplastic core (abstract, paragraph 31 ). The
porous core layer has a porosity between 5% to 95% (paragraph
32). The fiber has an average length in the range from 5 to 50
mm (paragraph 32).
Id. at 2. The Examiner further finds that because the skin material disclosed
in Raghavendran I is the same as the instant invention, the limitation
requiring the "skin layer having a limiting oxygen index lower than about 22
measured according to ISO 4589" is inherently met by Raghavendran I . Id.
The Examiner also finds that Raghavendran I does not teach that the
material "has a maximum smoke density Ds ( 4 minutes) of less than 200", a
"maximum heat release ( 5 minutes) of less than 65 kW /m2", and an
"average total heat release (2 minutes) of less than 65 kW/m2," as required
by claim 27. But, the Examiner finds that, because the core material meets
the remaining structural and chemical limitations of the claim, these
parameters "would be inherently present as like material has like property."
Id. at 4.
Appellants argue that the Examiner has not properly construed the
claims and begins by correctly explaining that "each of the independent
claims is directed to a composite material that does not include a skin layer
having a limiting oxygen index greater than about 22." Appeal Br. 9 (italics
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Application 13/416,617
added). Appellants then inconsistently argue that "[t]o anticipate the claims,
Raghavendran I must expressly or inherently disclose the thermoplastic
composite material, with the specified amounts of materials and the
specified performance characteristics, where the composite material lacks a
skin layer having a limiting oxygen index lower than about 22." Id. at 9-10
(italics added). Appellants argue that the Examiner has failed to provide
evidence that the claimed composite material is present Raghavendran I. Id.
We begin by considering the disputed claim language found in the
final "wherein clause" of claim 27 (as well as independent claims 33 and
39). During prosecution, we give claim terms the broadest reasonable
construction consistent with the specification. In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Appellants argue that "[t]o
anticipate the claims, Raghavendran I must expressly or inherently disclose
the thermoplastic composite material, with the specified amounts of
materials and the specified performance characteristics, where the composite
material lacks a skin layer having a limiting oxygen index lower than about
22." Appeal Br. 9-10 (italics added). This statement is in error. Rather,
each of the rejected claims requires that "the composite material does not
include a skin layer having a limiting oxygen index greater than about 22."
See Claims Appendix at Appeal Br. 13, 15 and 16. Said another way, a skin
layer on the claimed composite material must exhibit a limiting oxygen
index less than about 22. This understanding is consistent with the
Specification which describes a prior art composite sheet material having "at
least one skin layer having a limiting oxygen index greater than about 22."
Spec. ,-r 4 (italics added).
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With this understanding, the issue on appeal is whether the Examiner
reversibly erred in finding that the composite material of Raghavendran I
inherently "does not include a skin layer having a limiting oxygen index
greater than about 22." On this record, we find no such error.
"To establish inherency, the extrinsic evidence must make clear that
the missing descriptive matter is necessarily present in the thing described in
the reference .... Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). In
relying upon the theory of inherency, the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App.
& Inter. 1990).
For the reasons stated by the Examiner in the Final Action (Final Act.
3-5) and the Answer (Ans. 2--4 and 9-10), a basis in fact and technical
reasoning exists in support of the Examiner's findings that a skin layer
having a limiting oxygen index lower than about 22 is inherently present in
Raghavendran I. Specifically we find, consistent with the Examiner's
findings (Final Act. 3), that the skin layer of Raghavendran I is identical to
the skin layer of the instant claims. Compare Spec. i-fi-135 and 40-50 with
Raghavendran I i-fi-137--48. And, as the Examiner correctly finds, the
limiting oxygen index value is an inherent property of the composite. In re
Papesch, 315 F.2d 381, 391(CCPA1963) ("From the standpoint of patent
law, a compound and all of its properties are inseparable."). Appellants'
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Application 13/416,617
arguments to the contrary are unconvincing. Appellants have not shown
error in the Examiner's finding that the skin layers of Raghavendran I and
the instant claims are the same, nor did Appellants offer evidence that the
performance characteristics of the claimed composite material are different
from Raghavendran I.
Appellants also state that "[ n Jo evidence has been provided that the
exact combination of materials and amounts recited in the claims is present
in Raghavendran I." Appeal Br. 10. As explained above, however, the
Examiner provides evidence that Raghavendran I teaches, for example,
"[t]he porous core layer comprises a plurality of discontinuous reinforcing
fibers dispersed within one or more thermoplastic resin in an amount of
about 30 wt% to 55 wt% of the thermoplastic core (abstract, paragraph 31)."
Final Act. 3. Appellants do not specifically dispute this finding of fact or
argue this teaching does not satisfy the "about 35 wt.% to about 55 wt.%"
requirement of claim 27.
Thus, we discern no reversible error, and we sustain the Examiner's
§ 102 rejection based on Raghavendran I.
Rejection B -Anticipation
Appellants present similar arguments in opposition to Rejection B as
were presented in opposition to Rejection A. We also find, consistent with
the Examiner's findings (Final Act. 5), that the skin layer of Raghavendran
II is identical to the skin layer of the instant claims. Compare Spec. i-fi-135
and 40-50 with Raghavendran II i-fi-135, 40-48. As with Raghavendran I, the
Examiner finds that "[t]he porous core layer [of Raghavendran II] comprises
a plurality of discontinuous reinforcing fibers dispersed within one or more
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thermoplastic resin in an amount of about 35 wt% to 55wt% of the
thermoplastic core (abstract, table 1)." Final Act. 5. Thus, for the reasons
discussed above with respect to Rejection A, we discern no reversible error
in the Examiner's rejections.
Rejection C - Obviousness-type Double Patenting
Copending US Application No. 11/784,515, the subject of Rejection
C, was abandoned on or about August 18, 2009. The provisional
obviousness-type double patenting rejection of claims 27, 28, 30-34, 36-40,
and 42--44 over US Application No. 11/784,515 is therefore moot.
Rejection D- Obviousness-type Double Patenting
Appellants do not argue the merits of the Examiner's provisional
obviousness-type double patenting rejection of claims 27, 28, 30-34, 36-40,
and 42--44 based on copending US Application No. 12/002,518. See Appeal
Br. 12. We therefore summarily affirm the provisional obviousness-type
double patenting rejection.
CONCLUSION
The Examiner did not reversibly err in rejecting claims 27, 28, 30-34,
36-40, and 42--44.
DECISION
For the above reasons, the Examiner's rejection of claims 27, 28, 30-
34, 36-40, and 42--44 is affirmed.
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Application 13/416,617
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
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