Kurt E. Heikkila

Patent Trials and Appeals Board

Aug 2, 2019

10988214 - (D) (P.T.A.B. Aug. 2, 2019)

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.”).
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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.
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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”).
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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”).
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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
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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.
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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
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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
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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.”).
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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.”)
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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.
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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
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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).
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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 . . .
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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
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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
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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.
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(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.
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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
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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
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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
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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.
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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).
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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
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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