James Cordaro

Patent Trials and Appeals BoardSep 28, 2021

2020006321 (P.T.A.B. Sep. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/421,428 03/15/2012 James Frank Cordaro 038190/409504 3039 67141 7590 09/28/2021 Boeing and Alston & Bird, LLP ONE SOUTH AT THE PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 EXAMINER NELSON, MICHAEL B ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 09/28/2021 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): patentadmin@boeing.com usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES FRANK CORDARO ____________ Appeal 2020-006321 Application 13/421,428 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–7 and 19–30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies The Boeing Company as the real party in interest. Appeal Br. 2. Appeal 2020-006321 Application 13/421,428 2 CLAIMED SUBJECT MATTER The invention relates to composite structures. Spec. ¶ 2. According to the Specification, it can be useful to reinforce epoxy-based resin materials with inorganic coatings, such as thermal coatings or concrete. Id. ¶¶ 5, 6, 43. To improve adhesion, a specified adhesion promoting agent is provided between the inorganic coating and epoxy-based resin. Id. ¶ 8. The Specification teaches establishing chemisorbed water at a surface of the resin to be coated enhances adhesion between the adhesion promoting agent and the resin. Id. ¶¶ 23, 24, 28. Claim 1 illustrates the claimed invention and reads as follows: 1. A composite structure comprising: an epoxy-based matrix, the epoxy-based matrix including chemisorbed water, the chemisorbed water being present by exposing a surface layer of the epoxy-based matrix to water, and wherein the chemisorbed water is disposed only on the surface layer of the epoxy-based matrix; an inorganic coating layer disposed overlying said surface layer of the epoxy-based matrix having the chemisorbed water; and an adhesion promoting agent layer disposed between the epoxy-based matrix and the inorganic coating layer, the adhesion promoting agent layer adhering the inorganic coating to the epoxy-based matrix, the adhesion promoting agent having a following formula: (I) wherein X is an alkoxy group having from 1 to 3 carbon atoms; and n is a number from 1 to 5, and wherein the inorganic coating layer consists of one or more of a) potassium silicate, b) sodium silicate, or c) a combination of potassium silicate or Appeal 2020-006321 Application 13/421,428 3 sodium silicate with one or more of a metallic oxide, inorganic pigment, or basic material having a pH greater than 7. Appeal Br. 24 (Claims Appendix). Claim 19 recites a concrete material including a composite structure wherein chemisorbed water is disposed only on the surface layer of the epoxy-based matrix as is recited in claim 1. Claim 22 recites a composite structure including essentially the same features recited in claim 1. Each remaining claim on appeal depends from claim 1, 19, or 22. REJECTIONS I. Claims 1–7 and 19–30 stand rejected under 35 U.S.C. § 112, first paragraph, as lacking written description in the Specification. II. Claims 1–7 and 19–30 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. III. Claims 1, 2, 4–7, 21–23, 25–28, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Heitkamp,2 Sugizaki,3 Pepe,4 Gelest,5 Choi,6 Gutowski,7 and Kawamura.8 2 US 4,956,217, issued September 11, 1990. 3 US 6,284,364 B1, issued September 4, 2001. 4 US 4,046,794, issued September 6, 1977. 5 Gelest, Silane Coupling Agents 1–56 (2006). 6 Sungwon Choi et al., Effect of Water Addition on the Cure Kinetics of an Epoxy-Amine Thermoset, 49 J. Polymer Sci. Part A: Polymer Chem. 4650– 59 (2011). 7 W.S. Gutowski et al., Surface Silanization of Polyethylene for Enhanced Adhesion, 43 J. Adhesion 139–55 (1993). 8 US 2005/0214550 A1, published September 29, 2005. Appeal 2020-006321 Application 13/421,428 4 IV. Claims 3 and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Heitkamp, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, and Heitkamp 2.9 V. Claims 4, 5, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Heitkamp, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, and Cawse.10 VI. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Heitkamp, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, and Dimanshteyn.11 VII. Claims 1–4, 6, 7, 21–25, 27, 28, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cupta,12 Sugizaki, Pepe, Gelest, Choi, Gutowski, and Kawamura. VIII. Claims 5 and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cupta, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, and Vasoya.13 IX. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Cupta, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, and Dimanshteyn. X. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cornwell,14 Giner,15 Pepe, Gelest, Choi, Gutowski, and Kawamura. 9 US 5,460,864, issued October 24, 1995. 10 US 6,194,477 B1, issued Feb. 27, 2001. 11 US 2007/0197686 A1, published August 23, 2007. 12 US 4,718,993, issued January 12, 1988. 13 US 2002/0157859 A1, published October 31, 2002. 14 US 3,669,417, issued June 13, 1972. 15 US 5,366,670, issued November 22, 1994. Appeal 2020-006321 Application 13/421,428 5 XI. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Giner, Saito,16 Pepe, Gelest, Choi, Gutowski, and Kawamura. XII. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over van Ooij,17 Pepe, Gelest, Choi, Gutowski, and Kawamura. OPINION Rejection I: Written description Each independent claim includes a recitation that chemisorbed water is disposed only on the surface layer of the recited epoxy-based matrix. See claims 1, 19, 22. The Examiner finds the above-quoted language lacks written description in the Specification as originally filed because the Specification does not describe excluding chemisorbed water from the bulk of the resin. Final Act. 4. In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for lack of adequate descriptive support, it is incumbent upon the Examiner to establish that the originally-filed disclosure would not have reasonably conveyed to one having ordinary skill in the art that Appellants had possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Adequate description under the first paragraph of 35 U.S.C. § 112 does not require literal support for the claimed invention. In re Herschler, 591 F.2d 693, 701 (CCPA 1979); In re Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, it is sufficient if the 16 US 5,554,672, issued September 10, 1996. 17 US 2006/0178495 A1, published August 10, 2006. Appeal 2020-006321 Application 13/421,428 6 originally-filed disclosure would have conveyed to one having ordinary skill in the art that an appellant had possession of the concept of what is claimed. In re Anderson, 471 F.2d 1237, 1242 (CCPA 1973). As Appellant correctly notes (Appeal Br. 14), the Specification describes the epoxy resin having chemisorbed water “on or near the surface.” Spec. ¶ 23. The Specification also describes establishing chemisorbed water on the surface of the epoxy resin by exposing the surface of the epoxy resin to water or a humid atmosphere. Spec. ¶¶ 24, 28. The Examiner has not established why the foregoing original description of establishing chemisorbed water “on” the surface of the epoxy resin would not have been sufficient to convey to one of ordinary skill in the art that Appellant had possession of that subject matter, such that the claims may be drafted so as to be restricted to that which is expressed in the Specification. Each of claims 22 and 30 recites an amount of removed coating based on ASTM D 3359 Method A. The Examiner additionally finds the recited property range is not supported by the Specification because the Specification describes determining the range by a specified methodology that is not recited in the claims. Final Act. 4. According to the Examiner, the Specification describes steps other than the recited method for determining the amount of removed coating. Final Act. 4–5 (citing Spec. ¶ 19). However, as Appellant explains, “the methodology recited in paragraph [0019] of the as-filed application is merely a description of the methodology embodied in ASTM D 3359 Method A.” Appeal Br. 15. For the foregoing reasons, the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, is not sustained. Appeal 2020-006321 Application 13/421,428 7 Rejection II: indefiniteness The Examiner finds each of the independent claims is indefinite because “it is unclear if the claims only preclude hydroxyl groups formed by chemisorbtion below the surface of the epoxy . . . or if all hydroxyl groups (regardless of how they are formed) are precluded below the surface of the epoxy.” Final Act. 5–6. The independent claims on appeal recite establishing chemisorbed water by “exposing a surface layer of the epoxy-based matrix to water.” Each of claims 1 and 19 recites “the chemisorbed water is disposed only on the surface layer of the epoxy-based matrix.” Claim 22 similarly recites “the chemisorbed water being disposed only on the surface layer of the epoxy- based matrix.” These recitations say nothing about the presence or absence of other hydroxyl groups on or within the epoxy-based matrix. Thus, as Appellant correctly acknowledges, “hydroxy groups are not excluded from the bulk of the epoxy-based matrix.” Appeal Br. 16. Rather, as is stated in the independent claims, any chemisorbed water resulting from exposing a surface layer of the epoxy resin to water is disposed only on that surface layer. The Examiner does not demonstrate indefiniteness resulting from the above-mentioned language in the claims. The rejection under 35 U.S.C. § 112, second paragraph, is not sustained. Rejections III–XII: obviousness Each obviousness rejection on appeal is premised on the Examiner’s finding that the combined teachings of Gelest and Choi would have provided one of ordinary skill with a reason to add chemisorbed water to a surface of Appeal 2020-006321 Application 13/421,428 8 an epoxy-based resin to promote bonding of an alkoxysilane adhesion promoting agent. See Final Act. 7–42. Particularly, with regard to independent claims 1 and 22, the Examiner finds either Heitkamp or Cupta, when viewed in combination with Sugizaki or Pepe, would have lead one of ordinary skill in the art to form a composite comprising an adhesion promoting agent according to Appellant’s recited formula I provided between adjoining surfaces of an inorganic silicate coating and an epoxy- based resin. Id. at 7–9, 13–15, 20–22, 25–27. With regard to claim 19, the Examiner similarly finds each of various combinations of Cornwell, Giner, Saito, and van Ooij would have led the skilled artisan to include an adhesion promoting agent according to formula I between an epoxy-based resin coating and concrete. Id. at 31–42. In each instance, the Examiner acknowledges that the above-listed prior art does not teach chemisorbed water at the epoxy-based resin surface. See id. at 9, 15, 22, 27, 32, 36, 39 (acknowledging none of Heitkamp, Cupta, Cornwell, Giner, Saito, and van Ooij discloses the recited presence of chemisorbed water). To meet the chemisorbed water recitation in each of the independent claims, the Examiner finds Gelest generally teaches that alkoxysilane groups of a silane coupling agent “may bond with the underlying substrate via hydroxyl groups present on the surface of the substrate,” and that Choi teaches hydroxyl groups may be generated in an epoxy matrix through absorption of moisture in humid ambient conditions (Final Act. 9). From these findings, the Examiner determines it would have been obvious to expose Heitkamp’s or Cupta’s epoxy-based substrate to ambient moisture to produce hydroxyl groups in order to promote bonding between the epoxy resin and an alkoxysilane adhesion promoting agent. Id. at 9, 16, 22, 27. Appeal 2020-006321 Application 13/421,428 9 Appellant argues Gelest merely discusses silane reaction chemistry, and does not provide any teaching of providing chemisorbed water on a surface layer of a substrate. Appeal Br. 17. Appellant further argues Choi relates to addition of water to epoxies and resins to affect cure kinetics, and also does not teach providing chemisorbed water on a surface layer of an epoxy-based resin. Id. at 17–19. Appellant’s characterizations of Gelest and Choi are accurate. Gelest provides a general formula for silane coupling agents having an organofunctional group and hydrolyzable groups, e.g., alkoxy, attached to a silicon atom. Gelest 2. According to Gelest, “[f]ollowing hydrolysis, a reactive silanol group is formed, which can condense with other silanol groups, for example, those on the surface of siliceous fillers, to form siloxane linkages.” Id. As such, Gelest explains that the discussed silane coupling agent can form a bond between organic materials through the organofunctional group, and inorganic materials through siloxane linkages established between the coupling agent’s silanol groups and those present on the inorganic material. Id. That is, Gelest shows reaction between a silane coupling agent and hydroxyl groups present as silanol moieties on an inorganic substrate. The Examiner’s finding that Gelest more broadly teaches coupling of a silane coupling agent to any hydroxyl group present on the surface of any substrate, and particularly the surface of an epoxy-based resin, is not supported by evidence. Moreover, as Appellant notes, Choi discloses a study of cure kinetics. Choi Abstract (“In this study, the effect of water addition on cure kinetics in an epoxy-amine thermoset was investigated.”). Particularly, Choi mixed liquid epoxy-amine components with different amounts of water and Appeal 2020-006321 Application 13/421,428 10 subjected the compositions to curing at different temperatures. Id. at 4651. Choi’s discussion of epoxy-amine-water compositions used in a curing reaction does not support the Examiner’s finding that Choi teaches generating hydroxyl groups in an epoxy matrix. At best, Choi teaches incorporating hydroxyl moieties in a reaction solution used to establish an epoxy matrix through curing. In light of the foregoing, we are persuaded the Examiner’s finding that Gelest and Choi collectively teach generating hydroxyl groups on a surface layer of an epoxy-based resin matrix for the purpose of reacting with a silane coupling agent is not supported by a preponderance of the evidence. The Examiner alternatively relies on Gutowski or Kawamura as evidence in support of the finding that one of ordinary skill would have had a reason to add chemisorbed water to a surface of an epoxy-based resin to promote bonding of an alkoxysilane adhesion promoting agent. E.g., Final Act. 10–11. Gutowski discloses surface silanization of polyethylene through a process of corona discharge followed by application of an organofunctional silane. Gutowski Abstract. According to Gutowski, corona discharge generates hydroxyl groups on the polyethylene substrate, which then chemically interact with the silane. Id. at 140. Kawamura relates to a method for forming a patterned graft polymer on a substrate. Kawamura ¶ 23. Generally, Kawamura teaches binding a specified compound having a photopolymerization initiation site to a substrate, subjecting the compound to a patterned exposure that inactivates photopolymerization initiation in the exposed region, and causing photochemical cleavage of the photopolymerization initiation sites which were not exposed in the patterned exposure. Id. Kawamura teaches binding Appeal 2020-006321 Application 13/421,428 11 the graft polymer to a substrate through functional groups present on the substrate, such as hydroxyl groups, which can be provided by surface treatment of the substrate by corona treatment. Id. ¶¶ 77–80. However, the Examiner fails to explain why one of ordinary skill in the art would have applied the teachings of Gutowski or Kawamura to modify the composite structures disclosed in the principal references. Neither Gutowski nor Kawamura discusses composite materials having an epoxy-based resin coupled to an inorganic material. Rather, Gutowski teaches enhancing adhesion between polyethylene and certain adhesives including polyurethane, methacrylate, and cyanoacrylate. Gutowski Abstract. Kawamura, as noted, discusses forming a patterned photopolymerizable polymer on a substrate. Moreover, as Appellant argues (Appeal Br. 18), the Examiner’s reliance on Gutowski or Kawamura “summarily concludes” that hydroxyl groups formed on a substrate by corona discharge are equivalent to the recited chemisorbed water. In response, the Examiner states “Appellant has never explained why a hydroxyl group formed by, e.g., plasma/corona discharge or any other non-water based process, would be different from a hydroxyl group formed by ‘exposure to water’ as claimed.” Ans. 47. However, it is the Examiner’s burden to present evidence in support of the obviousness determination. Here, the Examiner presents no persuasive evidence to support the conclusory finding that hydroxyl groups generated through corona discharge would have been the same as the recited chemisorbed water on a surface layer of an epoxy-based resin matrix. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there Appeal 2020-006321 Application 13/421,428 12 must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In light of the foregoing, we are persuaded the Examiner’s obviousness determination based on Gutowski or Kawamura constitutes error. For the foregoing reasons, the Examiner’s rejections under 35 U.S.C. § 103(a) are not sustained. CONCLUSION The Examiner’s decision rejecting claims 1–7 and 19–30 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 19–30 112 Written Description 1–7, 19–30 1–7, 19–30 112 Indefiniteness 1–7, 19–30 1, 2, 4–7, 21–23, 25– 28, 30 103(a) Heitkamp, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura 1, 2, 4–7, 21–23, 25– 28, 30 3, 24 103(a) Heitkamp, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, Heitkamp 2 3, 24 4, 5, 25, 26 103(a) Heitkamp, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, Cawse 4, 5, 25, 26 29 103(a) Heitkamp, Sugizaki, Pepe, Gelest, Choi, 29 Appeal 2020-006321 Application 13/421,428 13 Gutowski, Kawamura, Dimanshteyn 1–4, 6, 7, 21–25, 27, 28, 30 103(a) Cupta, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura 1–4, 6, 7, 21–25, 27, 28, 30 5, 26 103(a) Cupta, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, Vasoya 5, 26 29 103(a) Cupta, Sugizaki, Pepe, Gelest, Choi, Gutowski, Kawamura, Dimanshteyn 29 19, 20 103(a) Cornwell, Giner, Pepe, Gelest, Choi, Gutowski, Kawamura 19, 20 19, 20 103(a) Giner, Saito, Pepe, Gelest, Choi, Gutowski, Kawamura 19, 20 19, 20 103(a) Ooij, Pepe, Gelest, Choi, Gutowski, Kawamura 19, 20 Overall Outcome 1–7, 19–30 REVERSED