Ex Parte Weidinger et al

Patent Trial and Appeal Board

May 25, 2016

13209647 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/209,647 08/15/2011
6449 7590 05/27/2016
ROTHWELL, FIGG, ERNST & MANBECK, P,C
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
Jtirgen WEIDINGER
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.
2185-315 1612
EXAMINER
ADKINS, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN WEIDINGER, CHRISTOPH ZAUNER,
MARKE. HARAKAL, and STEPHAN MOLLER1
Appeal2014-008600
Application 13/209,647
Technology Center 1700
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-8 and 13-18 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Armacell Enterprise
GMBH. Appeal Br. 2.
Appeal2014-008600
Application 13/209,647
BACKGROUND
Appellants' invention relates to "a thermal and/or sound insulation
system with resistance to elevated temperatures." Spec. i-f 1. Claim 1, the
sole independent claim, is representative:
1. A material comprising at least one of a thermal or
sound insulation material comprising at least one layer of
a chemically expanded and crosslinked high consistency
(HCR) polysiloxane polymer blend and where
crosslinking is achieved by at least one of
hydrosilylation, peroxides, sulphur compounds or metal
oxides and wherein the polysiloxane blend is expanded to
a closed cell content of at least 80% and to a density of
less than 350 kg/m3 according to ISO 845 and the
expanded and crosslinked polysiloxane blend is showing
a thermal conductivity of less than 0.15 W /mK at 0 °C
according to EN 12667.
Appeal Br. 13 (emphasis added).
The Examiner maintains the following grounds of rejection:2
I. Claims 1--4, 7, 8, and 15-18 under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent Pub. No. 2009/0308001 Al [hereinafter Wu]
(published Dec. 17, 2009) in view of U.S. Patent No. 6,121,336 [hereinafter
Okoroafor] (issued Sept. 19, 2000). Answer 2--4; Final Action 3-5.
II. Claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable
over Wu in view of Okoroafor, in further view of European Patent
Application EP 2 189 494 Al (published May 26, 2010). Answer 4---6; Final
Action 5---6.
2 In addition to the Office Action dated Sept. 26, 2013 ("Final Action"), the
Examiner's decision includes new grounds of rejection in the Answer dated
June 2, 2014. These new grounds appear to be a revision or correction of the
initial rationale for rejecting the claims.
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Appeal2014-008600
Application 13/209,647
III. Claims 13 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Wu in view of Okoroafor, in further view of U.S. Patent No. 3,317,455
(issued May 2, 1967). Answer 6; Final Action 6-7.
DISCUSSION3
The Examiner finds that Wu teaches a thermal insulation material
"comprising at least one layer of chemically expanded and crosslinked
polysilicone or silicone containing polymer," Answer 2 (citing Wu i-fi-f 13,
71, 90, 95), and that Wu teaches a polymer blend because the layer "may
also include a second resin or more resins as modifiers," such as "siloxane."
Id. (citing Wu i1 89). The Examiner finds that Wu does not teach the closed
cell content, density, and thermal conductivity of the polysiloxane material
as required by claim 1, but that Okoroafor teaches a thermal insulating
material with those properties, "comprising a polyurethane foam using
polysiloxane copolymer surfactant blended therein." Id. at 3. According to
the Examiner, "Wu and Okoroafor are analogous because they both disclose
a thermal insulating material comprising a siloxane polymer containing
foam." Id. Thus, the Examiner determines that
[i]t would have been obvious to a person of the ordinary
skill in the art at the time of the invention to incorporate
the polyurethane foam comprising a polysilicon blend of
Okoroafor into the chemically expanded layer of Wu
because Wu opens to including siloxane containing
modifiers to enhance the performance and strength or
reduce the raw materials cost of the material ... and in
3 We limit our discussion to independent claim 1, the only independent
claim.
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Appeal2014-008600
Application 13/209,647
order to improve the thermal insulating capacity of the
foam.
Id. (citing Wu i-f 89; Okoroafor 1:55---61, 4: 12-16).
Okoroafor teaches that the thermal insulating capacity of polyurethane
may be improved if, during formation of the foam, polysiloxane surfactants
are used to decrease the surface tension of the liquid polyurethane foam
components. See Okoroafor 3:52--4:16. As Appellants correctly point out,
see Appeal Br. 8, Okoroafor's teachings relate to the production of a
polyurethane foam, rather than an HCR polysiloxane polymer blend, as
required by claim 1. While the language of claim 1 is open to the presence
of a polyurethane additive, the Examiner has not articulated a reason why
Okoroafor's teachings about increasing the thermal insulating capacity of
polyurethane would also apply to an HCR polysiloxane polymer blend, with
or without the addition of polyurethane. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) ("[T]here must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.")
For the above reasons, the Examiner has not made a prima facie case
that independent claim 1 would have been obvious over the combination of
Wu and Okoroafor. The Examiner's additional findings regarding
dependent claims 2-8 and 13-18 do not address the above deficiencies.
Therefore, we determine that the Examiner reversibly erred in rejecting
claims 1-8 and 13-18.
DECISION
The Examiner's decision is reversed.
REVERSED
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