Kurt E. HeikkilaDownload PDFPatent Trials and Appeals BoardAug 2, 201910988214 - (D) (P.T.A.B. Aug. 2, 2019) Copy Citation 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. 10/988,214 11/12/2004 Kurt E. Heikkila 0592.000001US01 8824 26813 7590 08/02/2019 MUETING, RAASCH & GEBHARDT, P.A. P.O. BOX 581336 MINNEAPOLIS, MN 55458-1336 EXAMINER NERANGIS, VICKEY M ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 08/02/2019 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): ptodocketing@mrgs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KURT E. HEIKKILA ____________________ Appeal 2017-008554 Application 10/988,214 Technology Center 1700 ____________________ Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and DEBRA L. DENNETT, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 275–297, 302, and 307 in the above-identified application.3 Counsel for Appellant appeared for a hearing on April 16, 2019.4 We affirm. 1 e appeal record includes the following: Specification, Nov. 12, 2004 (“Spec.”); Final Office Action, May 19, 2016 (“Final Action”); Appeal Brief, Dec. 19, 2016 (“Appeal Br.”); Examiner’s Answer, Mar. 21, 2017 (“Answer”); and Reply Brief, May 22, 2017 (“Reply Br.”). 2 According to the Appeal Brief, the real party in interest is Tundra Composites, LLC. Appeal Br. 3. 3 See Appeal Br. 3 (listing claims on appeal). 4 See Hearing Transcript, entered July 10, 2019 (“Tr.”). Appeal 2017-008554 Application 10/988,214 2 BACKGROUND Appellant’s invention relates to a metal–polymer composite. Spec. 1:23, 70 (Abstract). In one embodiment, the composite may be shaped into the form of a wheel weight. See id. at 42:1–15, 54:25–55:2, Figs. 4A–B. According to Appellant, the composite material includes a polymer phase, a metal particulate with particle size greater than 10 microns, and an interfacial modifier that “allows for greater freedom of movement of the particles within the polymer” to “minimize[] particle–particle interactions, ‘preventing gouging and allowing for greater freedom of movement between particles.’” Appeal Br. 4 (citing Spec. 36:9–10). Appellant argues that “greater freedom of movement” is absent when there is no particle coating, or when the particle coating bonds to the polymer phase. See id. During the hearing, Appellant performed a demonstration intended to show that, compared to prior art wheel weights, which are stiff, metallic, and tough, the claimed wheel weights have greater flexibility and are able to be cut with scissors. See Tr. 5:7–11, 16–20. Independent claim 275, which we reproduce below, is representative: 275. A wheel weight article comprising a shaped metal and polymer composite, wherein the composite comprises: (a) a polymer phase comprising a thermoplastic polymer; and (b) at least 40 vol. % of a metal particulate having an exterior coating comprising an interfacial modifier on the metal particulate surface, wherein the exterior coating allows for greater freedom of movement of the particles within the polymer phase of the composite of the wheel weight article, compared to the same composite without the exterior coating on the metal particulate, when measured under the same conditions, and wherein the metal particulate comprises particulate having a particle size of greater than 10 microns. Appeal 2017-008554 Application 10/988,214 3 Appeal Br. Claims App’x 1 (emphasis of key phrases added). Claim 275 is the sole independent claim. Claims 276–297, 302, and 307 depend directly or indirectly from claim 275. Id. at 1–4. e Examiner’s grounds of rejection are as follows:5 Rejection 1: claims 275–282, 284–287, 291, 296, 302, and 307 under 35 U.S.C. § 103(a) as being unpatentable over Fujita6 in view of Bray.7 Answer 2–4. Rejection 2: claims 283 and 288 under 35 U.S.C. § 103(a) as being unpatentable over Fujita in view of Bray and Skidmore.8 Id. at 4–5. Rejection 3: claims 275–277, 279–282, 284, 286, 287, 289, 291, 294, 297, 302, and 307 under 35 U.S.C. § 103(a) as being unpatentable over Sakaki9 in view of Ohkawa.10 Id. at 5–9. Rejection 4: claims 283, 288, and 292 under 35 U.S.C. § 103(a) as being unpatentable over Sakaki in view of Ohkawa and Skidmore. Id. at 9– 10. Rejection 5: claims 285 and 296 under 35 U.S.C. § 103(a) as being unpatentable over Sakaki in view of Ohkawa and Bray. Id. at 10–11. 5 e Examiner has withdrawn rejections of claims 278, 286, and 307 under 35 U.S.C. § 112, 1st para. Answer 16; Advisory Action 2, Sept. 26, 2016; Appeal Br. 3. 6 Fujita, JP 63183956 A (published July 29, 1988) (“Fujita”). All citations are to the “Fujita Reference Translation” that Appellant has made of record. See Appeal Br. Evidence Appendix. 7 Bray et al., US 6,048,379 (issued Apr. 11, 2000) (“Bray”). 8 Skidmore, US 3,177,039 (issued Apr. 6, 1965) (“Skidmore”). 9 Sakaki et al., US 6,364,422 B1 (issued Apr. 2, 2002) (“Sakaki). 10 Ohkawa et al., US 4,891,399 (issued Jan. 2, 1990) (“Ohkawa”). Appeal 2017-008554 Application 10/988,214 4 Rejection 6: claim 290 under 35 U.S.C. § 103(a) as being unpatentable over Sakaki in view of Ohkawa and Dillard.11 Id. at 11. Rejection 7: claim 293 under 35 U.S.C. § 103(a) as being unpatentable over Sakaki in view of Ohkawa, Skidmore, and Tatemoto.12 Id. at 11–13. Rejection 8: claims 275–277, 279–281, 284, 286, 287, 289, 291, 294, 297, 302, 307 under 35 U.S.C. § 103(a) as being unpatentable over Bray in view of Ohkawa. Id. at 13–15. Rejection 9: claims 283, 288, 292, and 295 under 35 U.S.C. § 103(a) as being unpatentable over Bray, Ohkawa, and Skidmore. Id. at 15–16. DISCUSSION A. Rejections 1 and 2 (Fujita and Bray) With respect to the first ground of rejection, Appellant argues the claims as a group. See Appeal Br. 15–19. erefore, under 37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to claim 275. Claims 276–282, 284–287, 291, 296, 302, and 307 fall with claim 275. We separately address Appellant’s additional arguments with respect to rejection 2 below. e Examiner finds that Fujita discloses a high-density polyamide resin with a particle filler (particle sizes in the range 0.1–50 μm) and an interfacial modifier (metal stearate) with the composition ranges recited in claim 275. Answer 2–3. e Examiner finds that the metal stearate “inherently allows for greater freedom of movement of the iron particles,” because “Fujita teaches that the frictional resistance between the metal 11 Dillard et al., US 6,578,431 B2 (issued June 17, 2003) (“Dillard”). 12 Tatemoto, US 5,198,502 (issued Mar. 30, 1993) (“Tatemoto”). Appeal 2017-008554 Application 10/988,214 5 powder particles and resin is reduced and allows for the particles to be dispersed uniformly.” Answer 2 (citing Fujita 3). e Examiner states that while “Fujita teaches that the high density resin composition is used in well-balanced mold articles” such as flywheels, “it fails to disclose the use of the composition in a wheel weight.” Id. at 3 (citing Fujita 6:6–7, 7:1). However, according to the Examiner, Bray discloses that a high density composite material “is useful in both flywheels and wheel weights.” Id. (citing Bray 5:25–31). us, the Examiner determines that “it would have been obvious to one of ordinary skill in the art to utilize the high density composition of Fujita to make a wheel weight article of the claimed composite.” Id.; see also id. at 18. Appellant argues (i) that the Examiner failed to articulate a rationale for combining the references, and (ii) that the Examiner failed to identify each limitation in the claims. Appeal Br. 16. Claim constructions To address this rejection in light of Appellant’s arguments, we will interpret the terms interfacial modifier and exterior coating. We apply “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). a) “interfacial modifier” e Specification states that “[a]n interfacial modifier is an organic material that provides an exterior coating on the particulate promoting the Appeal 2017-008554 Application 10/988,214 6 close association of polymer and particulate.” Spec. 11:18–20. Its purpose is “to improve the association of the particulate with the polymer,” id. at 5:4–5, and it may also “ensure that the proportions of metal particulate and polymer obtain the minimum excluded volume filled with polymer,” id. at 5:15–17. Other purposes of the interfacial modifier are “to promote composite formation,” id. at 7:24–25, and “to overcome the forces that prevent the matrix from forming a substantially continuous phase of the composite,” id. at 11:14–15. e interfacial modifier “reduce[s] the friction between particles preventing gouging and allowing for greater freedom of movement between particles.” Id. at 36:9–10. e Specification also states that an interfacial modifier may “fall into broad categories including, for example, stearic acid derivatives,13 silane compounds,14 titanate compounds, zirconate compounds, [and] aluminate compounds,” and the choice “is dictated by metal particulate, polymer, and application.” Id. at 35:15–18. An interfacial modifier, as that term appears in the Specification, need not increase the melt flow index of the composite material. See id. at 46:17–18, 47:19–20 (identifying SIA0591.0 as an interfacial modifier and stating that its addition to the composite did not increase the melt flow). Also, the interfacial modifier may contain a group that is “chemically bonded to the polymer phase or as desired to remain unreactive if non-bonded interfacial[] modif[ication] can be applied.” Id. at 37:7–8. 13 is would include “an alkaline metal stearate or a stearate amide interfacial modifier.” Spec. 41:26–27. 14 is would include a “reactive silane.” Spec. 38:10. Appeal 2017-008554 Application 10/988,214 7 Appellant argues that a reactive coupling agent, which “reactively bonds both to the particle surface and the polymer resin,” cannot be considered an interfacial modifier. Appeal Br. 18. We disagree. While an unreactive interfacial modifier is one disclosed embodiment, the Specification also states that an interfacial modifier may have a group that is “chemically bonded to the polymer phase.” Spec. 37:7. In light of these passages in the Specification, the broadest reasonable interpretation of the term interfacial modifier encompasses any particle coating that promotes the close association of the particles with the polymer, regardless of whether it reacts with the polymer. b) “exterior coating” e Specification refers to an “exterior coating,” but does not appear to define it explicitly. See Spec. 11:18–20 (An interfacial modifier “provides an exterior coating on the particulate.”). In the hearing, counsel for Appellant argues that the claims require a complete coating, so that “the particles are hidden to the polymer, and the only thing the polymer sees is the coating.” Tr. 8:11–12, 14:20–15:2. However, we do not find anything in the Specification that explicitly or implicitly requires an “exterior coating” to be a complete coating of the particles. e Specification contains examples of a composite at varying amounts of interfacial modifier, and teaches that “there is an effective amount of interfacial modifier. An increase above a stoichiometric surface coverage will then reduce the material properties of the composite.” Spec. 48:8–10 (referring to Table 2). Although the Specification does not indicate what the stoichiometric surface coverage would have been, it contains at least three working examples in which the amounts of tungsten and polymer Appeal 2017-008554 Application 10/988,214 8 are comparable, yet the amount of interfacial modifier ranges from 0.03– 0.14% by weight. See id., Table 2 (data rows 2, 3, and 5). e disclosure that there is an “effective amount” does not clearly exclude at least some of the region below the level required for complete surface coverage. We also note that, in an embodiment that includes pre-treating the particles by spraying them with an interfacial modifier, the Specification teaches “drying carefully to ensure uniform particulate coating of the interfacial modifiers.” Spec. 38:12–13. While the Specification teaches a preference for a uniform coating, it does not suggest that anything less than complete uniformity would not be an “exterior coating.” Furthermore, the Specification includes examples that involve first mixing the polymer with the metal particles, and then adding the interfacial modifier, or adding the interfacial modifier first to the polymer, and then adding the metal particles. See Spec. 39:6–10, 40:11–15. is would suggest to a person of ordinary skill in the art that one may form a sufficient exterior coating without necessarily coating the particles prior to introduction of the polymer; thus, there would not necessarily be any guarantee of complete coverage in that case. In light of the above evidence, we determine that the broadest reasonable interpretation of the term exterior coating may include a partial or non-uniform coating. Whether the Examiner sufficiently articulated a reason to combine the references Appellant argues that the Examiner failed to articulate a sufficient reason to combine Fujita and Bray. Appeal Br. 16–17. According to Appellant, “the Examiner provided no articulated reasoning with some Appeal 2017-008554 Application 10/988,214 9 rational underpinning why a person of ordinary skill in the art at the time of the invention would have made a wheel weight from the composition of Fujita.” Id. at 17. We disagree. e Examiner’s well-articulated rationale is that “a high density composite is commonly used in both flywheels and wheel weights as taught by Bray,” therefore “it would have been obvious to one of ordinary skill in the art to utilize the high density composition of Fujita to make a wheel weight article of the claimed composite.” Answer 18–19. In other words, in following Bray’s teaching about making a wheel weight using a high-density resin composition, any other known high-density composition, such as that of Fujita, would have been a predictable substitution. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). Whether the Examiner identified each claim feature in the cited references Appellant also argues that the Examiner failed to show that the metal stearate of Fujita would actually function as an “interfacial modifier” as recited in claim 275. See Appeal Br. 18. According to Appellant, Fujita includes both the metal stearate and a silane coupling agent, which Appellant identifies as SIA0591.0.15 Id. According to Appellant’s declaratory evidence, this particular agent “reactively bonds both to the particle surface and the polymer resin,” and does not “allow greater freedom of movement of the 15 See Spec. 47:19–20 (“SIA0591.0 is N-(2-aminoethyl)-3-am[i]nopropyl- trimethoxy-silane.”). Appeal 2017-008554 Application 10/988,214 10 particles within the polymer phase.” Id. (citing Spec. 46 (Table 1); Williams 2014 Decl.16 ¶ 9, Kroll Decl.17 ¶ 6). Fujita teaches to the contrary, at least with respect to the particular mixture of components in Fujita’s disclosure. According to Fujita, despite the presence of SIA0591.0 in the composition, the addition of metallic stearate (which the Examiner identifies as the interfacial modifier) results in a decrease in “[f]rictional resistance between the metal powder particles and between the metal powder and the resin.” Fujita 3. is results in improved molding properties “even if a large amount of metal powder is contained.” Id. Furthermore, as the Examiner correctly notes, Fujita teaches the silane additive as an optional component. Answer 20; see also Fujita 1 (describing the composition without mention of the silane additive), 2 (“[A] silane or titanium coupling agent or the like can also be added.” (emphasis added)). Appellant also argues that the metal stearate “would not form a coating on the particle.” Appeal Br. 18; see also Reply Br. 5–6. According to Appellant, Fujita teaches coating the particles first with SIA0591.0, and then adding the metal stearate after mixing the particles with the polymer resin. See id. us, “it is the reactive coupling agent that forms an ‘exterior coating’ on the surface of the Fujita metal particles and not the metal stearate.” Id. is is not persuasive of reversible error, because as the Examiner correctly points out, Appellant’s Specification teaches that “the polymer, interfacial modifier, and metal particulate can be added together in bulk without pretreatment of the metal particulate.” Answer 19 (citing Spec. 39:6–12). 16 Declaration of Rodney Williams, Nov. 13, 2014 (“Williams 2014 Decl.”). 17 Declaration of John Kroll, Jan. 25, 2013 (“Kroll Decl.”) Appeal 2017-008554 Application 10/988,214 11 Appellant also argues that the metal stearate would not function as an interfacial modifier, but “as a mold release and a lubricating agent.” Appeal Br. 19; see also Reply Br. 6 (arguing that the Specification does not teach or suggest that Fujita’s metal stearate is an interfacial modifier). We agree that Fujita does teach that the metal stearate would function as a mold release and lubricating agent. See Fujita 3. However, this does not negate Fujita’s teaching that a reduction in the frictional resistance between the metal particles is one of the effects of “causing a metallic stearate and a plasticizer to be added and contained in a composition having a metal powder and a polyamide resin as main components.” Id. We note that Appellant’s Specification identifies an “alkaline metal stearate” as a suitable interfacial modifier. See Spec. 41:26–27; see also id. at 36:13–16 (“Stearic acid compounds modify the composites of the invention, the formation of a stearic layer on the surface of the metal particle reducing the intermolecular forces . . . .”). For the above reasons, we sustain the Examiner’s rejection of claims 275–282, 284–287, 291, 296, 302, and 307 over Fujita and Bray (Rejection 1). Whether Skidmore teaches the additional features of claims 283 and 288 (Rejection 2) Claim 283 depends from claim 275, and further recites “wherein the shaped composite is a linear extrudate that can be re-extruded.” Appeal Br. Claims App’x 2. Claim 288 depends from claim 275 and further recites “means for attachment that comprises an adhesive, and the shaped composite is a linear extrudate.” Id. Appeal 2017-008554 Application 10/988,214 12 e Examiner cites Skidmore for teaching an improvement to balanced wheel weights that involves an extruded strip, with an adhesive, that “can be cut to desired lengths.” Answer 5. (citing Skidmore 1:34–43, 2:3–21, 3:66–67, 4:10–13). According to the Examiner, Fujita’s extruded material “is inherently capable of being re-extruded,” because Fujita describes a thermoplastic material. Id. According to the Examiner, “it would have been obvious to one of ordinary skill in the art to prepare an extruded wheel weight article with an adhesive using the composite taught by Fujita and Bray in order to have it remain in position on the wheel.” Id. Appellant argues that “the Examiner identified no teaching in any of the cited documents that the ‘shaped composite is a linear extrudate that can be re-extruded,’ as recited in claim 283.” Appeal Br. 20. In the Reply Brief, Appellant also argues that “[t]he Examiner erred in focusing on only the polymer properties. e relevant question is whether the bonded metal/polymer composite can be re-extruded.” Reply Br. 7. ese arguments are not persuasive of reversible error. e Examiner clarified in the Answer that the rejection relies on the moldable properties of Fujita’s composite as a whole, and not just the polymer component. See Answer 20. Moreover, we agree with the Examiner that no evidence of record suggests that SIA0591.0 “is reactive to Fujita’s polyamide.” Id. us, the Examiner has made a prima facie showing that Fujita’s composite would inherently retain the thermoplastic properties of the polyamide matrix, after the addition of metal particles, plasticizer, metal stearate, and SIA0591.0, and after an initial extrusion. Appellant has not pointed to contrary evidence. See In re Best, 562 F.2d 1252, 1255 (CCPA 1997) (one may rebut a prima Appeal 2017-008554 Application 10/988,214 13 facie case of inherency by showing that the prior art products do not necessarily possess the characteristics of the claimed product). Appellant offers no other separate arguments that the Examiner reversibly erred in rejecting claims 283 and 288. us, we sustain the Examiner’s rejection over Fujita, Bray, and Skidmore (Rejection 2). B. Rejections 3–7 (Sakaki and Ohkawa) With respect to the third ground of rejection, Appellant argues the claims as a group, except for specific arguments relating to claim 289. See Appeal Br. 20–26. As to grounds of rejection 4–7, Appellant makes no distinct argument beyond the arguments raised with respect to the third ground. See Appeal Br. 26–28. erefore, under 37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to claims 275 and 289. Claims 276, 277, 279–287, 288, 290–294, 296, 297, 302, and 307 fall with claim 275. e Examiner finds that Sakaki teaches a wheel weight according to claim 275 including the use of “titanate-, aluminum-, and silane-based coupling agents to increase the affinity of the tungsten powder to the resin.” Answer 6 (citing Sakaki 5:31–37). However, Sakaki “fails to explicitly disclose that the coupling agent is added to allow for greater freedom of movement between the particles within the polymer phase.” Id. However, the Examiner also finds that Ohkawa teaches a “metallic filler having a surface coated with a water repellent agent (i.e., interfacial modifier) such as silane and titanate coupling agents.” Id. (citing Ohkawa, Abstract). According to the Examiner, Ohkawa teaches that these coupling agents provide “good moldability, good molded appearance, high mechanical properties, dimensional stability, and resistance against rusting.” Id. at 7 (citing Ohkawa 1:40–2:60). Appeal 2017-008554 Application 10/988,214 14 Ohkawa teaches that [w]hen the amount of the water repellent agent is too small, no sufficient coupling effect can be exhibited between the surface of the filler and the matrix phase so that the resultant molding composition would be poor in the moldability. When the amount thereof is too large, on the other hand, a phenomenon of slipping may be caused due to the excessively strong effect of lubrication between the filler surface and the matrix phase leading to disadvantages . . . . Ohkawa 8:10–18. According to the Examiner, this passage “strongly suggests that the water repellent agent is not reacted with [the polymer] matrix because there is lubrication between the filler surface and matrix phase (i.e., not ‘excessive lubrication’) when used in lower amounts like claimed and therefore [the composition] provides the claimed ‘greater freedom of movement.’” Answer 7 (citing Ohkawa 8:14–26). Because Ohkawa teaches that coupling agents “are added to metallic filler in a polymer matrix in order to improve moldability,” the Examiner determines that “it would have been obvious to one of ordinary skill in the art to utilize a coupling agent that improves moldability, i.e., improved freedom of movement between the particles.” Id. In response, Appellant argues (i) that Ohkawa’s water repellent agent does not function as an interfacial modifier, and would not result in greater freedom of movement between the particles, and (ii) Sakaki teaches away from replacing its coupling agents with the water repellent agent of Ohkawa. Whether Ohkawa’s water repellent agent functions as an interfacial modifier to allow greater freedom of movement Specifically, Appellant first argues that the coupling agent used in both Sakaki and Ohkawa is SIA0591.0, which “is a reactive coupling agent . . . Appeal 2017-008554 Application 10/988,214 15 that would result in a composite with ‘decreased melt flow and an increased viscosity, compared to a composite without the silane.’” Appeal Br. 22 (quoting Kroll Decl. ¶ 6) (citing Spec. 46, Table 1). According to Appellant, “[t]hese properties are the result of the reactive bonding between the silane coupling agent on the metal particulate and the polymer.” Id. us, Appellant argues that the Examiner incorrectly characterizes Ohkawa’s water repellent agent as an interfacial modifier. See id. at 21. We disagree. Our interpretation of the term interfacial modifier, discussed above, would not exclude reactive bonding between the particles and the polymer matrix. us, we find no reversible error in the Examiner’s determination that Sakaki and Ohkawa both teach interfacial modifiers according to the broadest reasonable interpretation of that term. Appellant also disagrees with the Examiner’s finding that Ohkawa teaches that the use of the water repellent agent provides for improved moldability in the composite, thus evidencing an increased freedom of movement between the particles. Id. at 22 (citing Final Action 9–10). According to Appellant, “Ohkawa does not teach that the water repellent agent provides for these properties.” Id. Appellant further suggests that it is the addition of “a low molecular weight oxidized polypropylene,” rather than the water repellent agent, that “imparts improved moldability to the moldable composite.” Id. at 23 (citing Ohkawa 8:56–61). We do not find this argument persuasive of reversible error. Whether or not Ohkawa identifies the water repellent agent as the specific cause of the improved moldability, Ohkawa clearly teaches that the resulting material is moldable in comparison to prior art materials. See Ohkawa 10:19–68. In addition, we find persuasive the Examiner’s finding that Ohkawa’s teaching Appeal 2017-008554 Application 10/988,214 16 that the water repellent agent causes a lubrication or “slipping” phenomenon is strong evidence that the water repellent agent is the cause of at least some increase in the freedom of movement between the particles. See Answer 22. Also, while we agree that Ohkawa teaches an improvement in moldability due to the addition of low molecular weight oxidized polypropylene, Ohkawa teaches that this component is optional, and that the disclosed invention (even without it) has improved moldability. See Ohkawa 2:38–60. Appellant also argues that “[t]he focus of Ohkawa is on the problem of waterproofing metal particles to be used in the moldable composition,” and thus, Ohkawa’s teaching would not “be reasonably pertinent to the formation of a metal polymer composite having improved viscoelastic properties.” Appeal Br. 22–23 (citing Ohkawa 1:40–50). We note that claim 275 does not explicitly require the material to have viscoelastic properties. See Appeal Br. Claims App’x. 1. Moreover, Ohkawa teaches that its composite material has “a combination of moldability and machinability,” Ohkawa 10:54–65, that is useful for “structural and functional parts in . . . automobiles” and for “all kinds of rotary members . . . such as flywheels, gears, pulleys, cams, motors and the like,” id. at 10:30–36. A person of ordinary skill in the art would have regarded Ohkawa as reasonably pertinent to the problem of selecting a high density, shaped metal–polymer composite for a wheel weight according to claim 275. Appellant next argues that Ohkawa teaches SIA0591.0 as a preferred embodiment, and thus “discloses a preference for strong reactive coupling between their metal particles and the polymer matrix, the same property that Sakaki wants from their ‘coupling agent.’” Appeal Br. 23 (citing Ohkawa 7:30–31). Appellant argues that the Specification and the declaratory Appeal 2017-008554 Application 10/988,214 17 testimony show that the use of SIA0591.0 “would not result in a material exhibiting the presently claimed features of ‘greater freedom of movement’ of the particles within the polymer phase.” Id. (citing Spec. 46, Table 1; Williams 2010 Decl.18; Kroll Decl.). is is not persuasive of reversible error, because Ohkawa identifies SIA0591.0 as only one of two preferences within a list of “suitable silane- based coupling agents.” Ohkawa 7:19–31. Ohkawa also notes that there are several classes of suitable agents, “of which silane-based coupling agents, titanate-based coupling agents and silicone fluids are preferred.” Id. at 7:12– 14.19 Likewise, Sakaki teaches that suitable coupling agents may include, for example, “titanate-, aluminum- and silane-based coupling agents.” Sakaki 5:33–35. us, both Ohkawa and Sakaki teach a broad range of interfacial modifiers other than SIA0591.0. In addition, the evidence on this record does not support a determination that Sakaki or Ohkawa teaches away from the claimed invention by disclosing SIA0591.0 as a potential reactive coupling agent. As the Examiner correctly points out, Sakaki’s Example 1 uses SIA0591.0 to form a wheel weight “where the material is melted, blended, and pelletized followed by injection molding.” Answer 27 (citing Sakaki 8:47–63). is suggests that there are circumstances in which the use of SIA0591.0 as an interfacial modifier leads to a composite material that is remoldable. We recognize that Appellant’s declarant presents evidence of a contrary result. 18 Declaration of Rodney Williams, Sept. 2, 2010 (“Williams 2010 Decl.”). 19 Note that the Specification features titanate coupling agents (KR238J and LICA 09) within four of the working examples shown in Table 1. See Spec. 46. Appeal 2017-008554 Application 10/988,214 18 (See Williams 2010 Decl.; see also Reply Br. 9). However, even if Sakaki’s Example 1 is mistaken or inoperative (which we need not decide here), “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under § 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). Even if Sakaki’s Example 1 is non- enabling, a preponderance of the evidence suggests that an ordinarily skilled artisan would have been motivated, and able, to select a suitable interfacial modifier other than SIA0591.0 to make the wheel weight as recited in claim 275. Whether Sakaki teaches away from using a water repellent agent that increases freedom of movement of the particles Appellant argues that Sakaki teaches away from the claimed invention because it “expressly teaches subjecting the tungsten powder to ‘a coupling treatment to enhance the affinity with the resin,’” and that “it is most preferred to use a silane-based coupling agent in view of the effect of enhancing the affinity with the resin.” Appeal Br. 24 (quoting Sakaki 5:31– 33, 35–37). According to Appellant, “affinity with the resin” is incompatible with “freedom of movement” of the metal particles in the polymer resin. Id. (citing Williams 2010 Decl. ¶¶ 8–9; Kroll Decl. ¶¶ 5–7). “[I]f the Examiner is correct that the water repellant agent of Ohkawa provides greater freedom of particle movement,” Appellant asks, “why would a person of ordinary skill use the water repellant agent in a composite in which the affinity of the tungsten powder to the polymer resin is taught to be an important feature?” Id. at 25. Appeal 2017-008554 Application 10/988,214 19 We do not find this argument persuasive of reversible error. Sakaki’s use of the term affinity is consistent with the teachings in Appellant’s Specification that “[a]n interfacial modifier . . . provides an exterior coating on the particulate promoting the close association of polymer and particulate,” Spec. 11:18–20 (emphasis added), that it may “improve the association of the particulate with the polymer,” id. at 5:4–5 (emphasis added), and that it may “overcome the forces that prevent the matrix from forming a substantially continuous phase of the composite,” id. at 11:14–15. us, the preponderance of the evidence supports the Examiner’s finding that a person of ordinary skill in the art would have understood Sakaki’s use of affinity to describe “compatibiliz[ing] the particle filler to the polymer in order to disperse the particles in the polymer.” Answer 24. Furthermore, even if Sakaki’s use of the term affinity implied a reactive coupling, Sakaki merely describes the use of an affinity-enhancing coupling treatment as a preference; thus, a person of ordinary skill in the art would not have understood Sakaki to “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Whether Sakaki in view of Ohkawa teaches a composite that can be re-extruded (claim 289) Claim 289 depends from 275, and further recites “a fluoropolymer,” that “the composite can be re-extruded,” and “wherein metal comprises 40 to 96 vol.% of the composite.” Appeal Br. Claims App’x. 3. e Examiner finds that Sakaki teaches that the composite may, after its initial extrusion, be “re-melted and formed into a balance weight by injection or compression molding (i.e., processing requiring a second melting).” Answer 8 (citing Sakaki 6:58–62, 8:5–13). Also, according to the Examiner, Sakaki teaches Appeal 2017-008554 Application 10/988,214 20 that the composite “can be ‘reused’ which suggest[s] that it can be remelted and remolded, including reextruded.” Id. (citing Sakaki 2:34–37). e Examiner also finds that Sakaki teaches that the composition is a “thermoplastic resin composition,” and that a thermoplastic material “can be melted and remelted by its very definition.” Answer 8. Appellant argues that “inclusion of a polymer that can be extruded and re-extruded does not necessarily mean that a composite including that polymer, a metal particulate, and an interfacial modifier coating on the metal particulate surface can be extruded and re-extruded.” Appeal Br. 26. While that may be true, we agree with the Examiner that Sakaki’s example of extrusion and re-extrusion refers not to the polymer component, but to the high-specific-gravity composite as a whole. See Sakaki 8:5–13 (describing the production of a balance weight by “integrally molding a metal clip and a weight made of a resin composition having high specific gravity,” or by “covering a previously produced metal clip with a resin composition having high specific gravity to form a weight portion. On molding, there can be used conventionally known various methods such as injection molding and compression molding.”). Because Appellant has not identified reversible error, we sustain the Examiner’s grounds of rejection 3–7 for the above reasons. C. Rejections 8 and 9 (Bray and Ohkawa) With respect to the eighth ground of rejection, Appellant argues the claims as a group. See Appeal Br. 28–32. erefore, under 37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to claim 275. Claims 276, 277, 279–281, 284, 286, 287, 289, 291, 294, 297, 302, and 307 fall with claim Appeal 2017-008554 Application 10/988,214 21 275. We separately address Appellant’s additional arguments with respect to rejection 9 below. e Examiner finds that Bray discloses a high-density composite material for use as a wheel weight, having the particulate and polymer composition ranges recited in claim 275. Answer 13–14. According to the Examiner, Bray discloses each of the limitations of claim 275 except that it “fails to disclose the addition of an interfacial modifier”; however, the Examiner finds that Ohkawa teaches this limitation. See id. at 14–15. According to the Examiner, given the advantages that Ohkawa teaches for adding a water repellent agent to the surface of the metallic filler, “it would have been obvious to one of ordinary skill in the art to utilize a water repellent agent on the surface of Bray’s metallic filler . . . to improve molding properties in the wheel weight of Bray.” See id. at 14–15. Appellant argues (i) that combining the different mechanisms of Bray and Ohkawa would have been unpredictable, (ii) that Ohkawa’s water repellent agent does not function as an interfacial modifier, and (iii) that the Examiner failed to articulate a motivation to combine Bray with Ohkawa. Whether Bray and Ohkawa would have been a predictable combination Appellant contrasts the mechanisms by which Bray and Ohkawa achieve composite properties: “Bray . . . relies on a combination of particulate/fiber and a binder polymer to form a composite,” and “Ohkawa teaches using a water repellant-coated particle in a molding composition used to form shaped articles.” Appeal Br. 29–30. According to Appellant, “[t]he Examiner identified no reason why a person having ordinary skill in the art would have been able to predict the effect on moldability of using the Appeal 2017-008554 Application 10/988,214 22 water repellent agent of Ohkawa on the surface of Bray’s metallic filler,” apart from impermissible hindsight. Id. at 30. We do not find this argument persuasive of reversible error. As the Examiner notes, the rejection relies on Ohkawa for the motivation to use a water repellent agent as an interfacial modifier, and Ohkawa teaches that this agent is essential when compounding the thermoplastic polymer with the metal filler. Answer 31–32 (citing Ohkawa 7:3–9). Ohkawa also teaches suitable amounts for this interfacial modifier, see Ohkawa 8:4–24, and describes its resulting properties and potential uses, including in automobiles and in rotary parts. See id. at 10:19–68. Like Bray, Ohkawa teaches the use of tungsten as the metallic filler. See Bray, Abstract; Ohkawa 6:13. We also note that both references have teachings in common about the choice of polymer: for example, fluoropolymers (Bray 43:25; Ohkawa 5:34–46), polyvinyl chlorides (Bray 39:15; Ohkawa 3:67–4:10), and nylon-12 (Bray 3:6–7; Ohkawa 4:11). A preponderance of the evidence on this record indicates that a person of ordinary skill in the art would have had the motivation and the ability to apply Ohkawa’s teachings to Bray’s wheel weight, with a predictable result. Whether Ohkawa’s water repellent agent functions as an interfacial modifier to allow greater freedom of movement of the particles As with the Examiner’s third ground of rejection discussed above, Appellant argues that Ohkawa’s water repellent agent does not function as an interfacial modifier as recited in the claims. Appeal Br. 31. We do not find this argument persuasive, for the reasons explained above in part B.1. Appeal 2017-008554 Application 10/988,214 23 Whether the Examiner failed to articulate a motivation to combine Bray and Ohkawa Appellant also argues that the Examiner has failed to articulate a sufficient reason why a person of ordinary skill in the art would have coated the particles of Bray with the water repellent agent of Ohkawa. Appeal Br. 31. Appellant points out that Ohkawa’s publication date was eight years before Bray, and yet Bray did not teach the benefit of any particle coating. Id. Appellant also argues that the Examiner did not establish why a person of ordinary skill in the art would have added Ohkawa’s coating agent to a composition that is already useful without the coating. Id. at 31–32. We do not find these arguments persuasive. Appellant has not pointed to any evidence on the record that Bray or others were unsuccessful in adding Ohkawa’s particle coatings to a wheel weight material such as that of Bray. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“ e mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.”) Moreover, Appellant does not point to anything in Bray that teaches away from the addition of an interfacial modifier. See Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“[A] prior art reference that does not specifically refer to one element of a combination does not, per se, teach away.”) For the above reasons, we sustain the Examiner’s rejection of claims 275–277, 279–281, 284, 286, 287, 289, 291, 294, 297, 302, 307 over Bray and Ohkawa (Rejection 8). Appeal 2017-008554 Application 10/988,214 24 Whether Skidmore teaches the additional features of claims 283, 288, 292, and 295 (Rejection 9) Claim 283 depends from claim 275, and further recites “wherein the shaped composite is a linear extrudate that can be re-extruded.” Appeal Br. Claims App’x 2. Claim 288 depends from claim 275 and further recites “means for attachment that comprises an adhesive, and the shaped composite is a linear extrudate.” Id. Claim 292 depends from claim 275 and further recites “wherein the shaped composite is in the form of a linear extrudate that can be cut into individual wheel weight masses.” Id. at 3. Claim 295 depends from claim 275 and further recites, among other limitations, “wherein the shaped composite is a linear extrudate that can be re-extruded into a linear extrudate and cut into individual wheel weight masses.” Id. According to the Examiner, Bray “discloses that the high density material is . . . used in a wheel weight and that the material can be extruded, however, it fails to disclose that the wheel weight is an extruded material attached to wheel with adhesive.” Answer 15. Nevertheless, the Examiner cites Skidmore for teaching an improved wheel weight formed of an extruded strip, attached with a pressure-sensitive adhesive, which “can be cut to desired lengths.” Answer 15. (citing Skidmore 1:34–43, 2:3–21, 3:66– 67, 4:10–13). erefore, according to the Examiner, “it would have been obvious to one of ordinary skill in the art to prepare a wheel weight article with an adhesive using the composition taught by Bray and Ohkawa in order to have it remain in position on the wheel.” Id. at 15–16. Appellant argues that “the Examiner identified no teaching in any of the cited documents that the ‘shaped composite is a linear extrudate that can be re-extruded,’ as recited in claims 283 and 295.” Appeal Br. 32–33. We Appeal 2017-008554 Application 10/988,214 25 disagree. As the Examiner correctly determines, Ohkawa teaches an example in which the composite “is extruded (first melting) and formed into solid pellets and subsequently inject[ion] molded (second molding) to form test plates.” Answer 34–35 (citing Ohkawa 13:9–17). us, the preponderance of the evidence on this record indicates that the wheel weight of Bray, as modified by Ohkawa, could be re-extruded. Appellant offers no other separate arguments that the Examiner reversibly erred in rejecting claims 283, 288, 292, or 295. us, we sustain the Examiner’s rejection over Bray, Ohkawa, and Skidmore (Rejection 9). CONCLUSION For the above reasons, and based on the Examiner’s findings and conclusions as a whole which we find persuasive, the preponderance of the evidence supports the Examiner’s conclusion of obviousness, and Appellant has not shown reversible error. We therefore affirm the Examiner’s decision on all grounds. DECISION e Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. §§ 1.136(a)(1)(iv), 41.50(f) (2018). AFFIRMED Copy with citationCopy as parenthetical citation