Nelson, Sherri M. et al.

Patent Trials and Appeals Board

Dec 20, 2019

14005832 - (D) (P.T.A.B. Dec. 20, 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.
14/005,832 12/11/2013 Sherri M. Nelson CICT-67-PCT-
US 2011P0054
2027
104330 7590 12/20/2019
Dority & Manning, P.A. and Ticona LLC
Post Office Box 1449
Greenville, SC 29602
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
12/20/2019 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHERRI M. NELSON, DAVID W. EASTEP, TIMOTHY L.
TIBOR, TIMOTHY A. REGAN, MICHAEL L. WESLEY, and RICHARD
STIEHM
Appeal 2019-002246
Application 14/005,832
Technology Center 1700
Before KAREN M. HASTINGS, JULIA HEANEY, and BRIAN D.
RANGE, Administrative Patent Judges.
RANGE, 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 1–6, 10–16, 31–34, and 37–40. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Ticona LLC.
Appeal Br. 1.
Appeal 2019-002246
Application 14/005,832

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a composite rod that
could be used, for example, to transmit fluids and/or electrical signals
between the sea surface and equipment located on a sea bed. Spec. ¶ 2. In
particular, the Specification describes impregnating the roving (i.e., the
bundle or tow of individual fibers (id. at ¶ 23)) with a thermoplastic polymer
matrix to achieve a very small void fraction leading to excellent strength
properties. Id. at ¶ 22. Claim 1, reproduced below with formatting added
for readability and emphases added to certain recitations at issue, is
illustrative:
1. A composite rod extending in a longitudinal direction,
wherein the rod contains a core comprising a plurality of
thermoplastic impregnated rovings,
the rovings containing continuous fibers oriented in the
longitudinal direction and a thermoplastic matrix that embeds the
fibers,
the fibers having a ratio of ultimate tensile strength to
mass per unit length of greater than 1,000 Megapascals per
gram per meter,
wherein the continuous fibers constitute from 25 wt.% to
80 wt.% of the core and
the thermoplastic matrix constitutes from 20 wt.% to 75 wt.%
of the core, and
wherein the rovings are distributed generally symmetrically
about a longitudinal center of the core,
wherein the core has a void fraction of 3% or less, and

2 In this Decision, we refer to the Final Office Action dated January 26, 2018
(“Final Act.”), the Appeal Brief filed August 22, 2018 (“Appeal Br.”), and
the Examiner’s Answer dated November 19, 2018 (“Ans.”).
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Application 14/005,832

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wherein the rod has a minimum flexural modulus of 10
Gigapascals, a bend radius of less than 40 times the outer
diameter of the rod, and a minimum ultimate tensile strength of
300 Megapascals.

Appeal Br. 11 (Claims Appendix).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Hilakos
Beever
Walls et al.
(“Walls”)
Atkinson

US 4,939,002
US 4,992,229
US 5,285,699

US 2006/0280938 A1

July 3, 1990
Feb. 12, 1991
Feb. 15, 1994

Dec. 14, 2006

REJECTION(S)
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1–6, 10–14, 16, 31–34, and 37–39 under 35 U.S.C. § 103 as
obvious over Beever in view of Atkinson and Hilakos. Id.
B. Claims 15 and 40 under 35 U.S.C. § 103 as obvious over Beever in
view of Atkinson, Hilakos, and Walls. Id. at 6.

OPINION
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies.
Independent claims 1 and 31 each recite a composite rod with
thermoplastic impregnated rovings where the “core has a void fraction of 3%
or less” and where the rod has other recited physical properties (“the rod has
a minimum flexural modulus of 10 Gigapascals, a bend radius of less than
Appeal 2019-002246
Application 14/005,832

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40 times the outer diameter of the rod, and minimum ultimate tensile
strength of 300 Megapascals”). The Examiner finds that Beever teaches a
composite rod having thermoplastic impregnated rovings. Ans. 4 (citing
Beever). The Examiner combines the teachings of Atkinson to reach the
particular numbers of filaments and filament size and strength for the
rovings. Id. (citing Atkinson).
With respect to void fraction, the Examiner finds that Hilakos teaches
filaments encapsulated to eliminate air pockets or voids between fibers with
the encapsulation increasing strength. Ans. 4–5 (citing Hilakos). The
Examiner determines that it would have been obvious to select Hilakos’s
method to manufacture the Beever rod in order to eliminate resin voids and
improve strength. Id.
With respect to the other recited physical properties, the Examiner
finds that the cited art does not explicitly recognize these properties. Id. at
5–6. The Examiner, however, determines that the properties would be
inherent in the composite rod suggested by the prior art because of “the use
of like materials and method.” Id.
Appellant persuasively argues that the Examiner has not adequately
established the void fraction and physical rod properties that claims 1 and 31
recite. Appeal Br. 4–9. Our reviewing court has held that where “the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.” In re Best,
562 F.2d 1252, 1256 (CCPA 1977); see also In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
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Application 14/005,832

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products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”). Our reviewing court has also stated,
however, that “[t]he mere fact that a certain thing may result from a given set
of circumstances is not sufficient [to establish inherency.]” In re Rijckaert,
9 F.3d 1531, 1534 (Fed. Cir. 1993) (quoting In re Oelrich, 666 F.2d 578,
581–82, 212 USPQ 323, 326 (CCPA 1981)) (emphasis and bracketed
additions original).
Here, Appellant provides evidence in the form of the April 10, 2018,
declaration of co-inventor Mr. David Eastep (“Eastep Decl.”). Mr. Eastep
explains that the Hilakos reference does not establish a process with no
voids. Eastep Decl. ¶¶ 9–11. Hilakos states that, for its resin impregnated
strand, “visual inspection with a 10 power magnification does not reveal any
resin voids between glass fibers.” Hilakos 8:4-8. Mr. Eastep, however,
states that 10 power magnification is not enough magnification to determine
void fraction. Eastep Decl. ¶ 11. The Examiner does not dispute this
particular testimony. Ans. 8. Thus, the Examiner’s rejection does not
establish by a preponderance of the evidence that Hilakos (or any of the
cited references) necessarily teaches a process resulting in a core having “a
void fraction of 3% or less” as claims 1 and 31 recite.
Mr. Eastep also provides evidence that the methods (e.g., the
“poltrusion” manufacturing method of Hilakos) described by the cited art are
“known immersion bath-based methods” that cannot result in rods “having
the combination of properties required by independent claims 1 and 31.”
Eastep Decl. ¶¶ 12–15. Mr. Eastep explains that the improved rod properties
that claims 1 and 31 recite are the result of using the impregnation die
process disclosed by the Specification. Id. at ¶¶ 12–15; see also, e.g., Spec.
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Application 14/005,832

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Fig. 4 (depicting impregnation die), ¶¶ 22, 41–45, 76. The Examiner does
not persuasively refute the evidence provided by Mr. Eastep by, for
example, adequately explaining why the Specification and the cited
references describe processes so identical that the processes would
inherently produce rods with the same properties. See Ans. 5–6, 9–10.
Because Appellant’s argument identifies error, as explained above, we
do not sustain the Examiner’s rejection of claims 1 and 31. Because the
Examiner’s treatment of the dependent claims does not cure this error, we
also do not sustain the Examiner’s rejection of the dependent claims.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 10–14,
16, 31–34,
37–39
103 Beever, Atkinson,
Hilakos
1–6, 10–
14, 16, 31–
34, 37–39
15, 40 103 Beever, Atkinson,
Hilakos, Walls
15, 40
Overall
Outcome
1–6, 10–
16, 31–34,
37–40

REVERSED