OCV Intellectual Capital, LLC

Patent Trials and Appeals BoardMar 26, 2021

2020002597 (P.T.A.B. Mar. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/055,893 02/29/2016 Emmanuel Lecomte 34485/08031 6750 99658 7590 03/26/2021 Calfee, Halter & Griswold LLP The Calfee Building 1405 East Sixth Street Cleveland, OH 44114-1607 EXAMINER LOPEZ, RICARDO E. ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 03/26/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPLegal@OwensCorning.com ipdocket@calfee.com wfrick@calfee.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EMMANUEL LECOMTE and ANNE BERTHEREAU Appeal 2020-002597 Application 15/055,893 Technology Center 1700 Before JEFFREY T. SMITH, N. WHITNEY. WILSON, and LILAN REN, Administrative Patent Judges. SMITH, 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 36–61. (See Non-Final Act. 1). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as OCV Intellectual Capital, LLC. (Appeal Br. 3). Appeal 2020-002597 Application 15/055,893 2 CLAIMED SUBJECT MATTER Appellant’s invention generally relates to glass reinforcement strands that combine the mechanical properties of R-glass, in particular its specific Young’s modulus, with improved melting and fiberizing properties, approaching those of E-glass. (Spec. 3). Claim 36, reproduced below, is illustrative of the claimed subject matter on appeal: 36. A composition comprising the following constituents in the limits defined below, expressed as percentages by weight: SiO2 58.0–63.0% Al2O3 12.0–20.0% CaO 12.0–17.0% MgO 6.0–12.0% CaO/MgO ≤2.0 Li2O 0.1– 0.8% BaO+SrO 0–3.0% B2O3 0–3.0% TiO2 0–0.13% Na2O+K2O ≤ 2.0 F2 0–1.0% Fe2O3 < 1.0%, wherein the composition has an Al2O3+MgO+Li2O content greater than or equal to 23%. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Neely US 4,199,364 Apr. 22, 1980 Meng US 2001/0000500 A1 Apr. 26, 2001 Appeal 2020-002597 Application 15/055,893 3 REJECTIONS I. Claims 36–61 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 36, 47, 52, and 58 of US Patent application No. 15/055,898. (Ans. 4). II. Claims 36–45 and 48–61 are rejected under 35 U.S.C. § 103(a) as unpatentable over Neely. (Ans. 4–8). III. Claims 46 and 47 are rejected under 35 U.S.C. § 103(a) as unpatentable over Neely in view of Meng. (Ans. 8). OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections,” citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)). Obviousness-type double patenting We summarily sustain the Examiner’s provisional rejection of claims 36–61 on the grounds of non-statutory obviousness-type double patenting as unpatentable over claims 36, 47, 52, and 58 of US Patent application No. 15/055,898 without further comment, because Appellant does not contest this rejection (see Briefs generally). 37 C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of Appeal 2020-002597 Application 15/055,893 4 rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Obviousness Rejections under § 35 U.S.C. § 103(a) The Appellant, for Rejection II, relies on the same arguments for claims 36–45 and 48–59, focusing only on independent claim 36 (Appeal Br. 15–23). Appellant presents arguments under a separate heading for claims 60 and 61. Appellant fails to provide substantive arguments addressing Rejection III, claims 46 and 47. (Appeal Br. 24). Therefore, we decide this appeal on the basis of claim 36, which we designate as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). We will also address the separately argued claims. The present application is a continuation of US patent application 11/722,039, wherein an appeal by Appellant was filed and a Board decision rendered affirming an obviousness rejections over Neely. (Appeal 2014- 000205 (PTAB Dec. 30, 2015)). We incorporate our prior decision herein. Rejection II Claims 36–45 and 48–59 Appellant argues the claimed invention provides glass reinforcement strands that achieve favorable mechanical properties that are not disclosed by Neely. Appellant specifically states: The subject claims are directed to a specific selection and combination of glass constituents that, when included in a single glass composition, make it possible to provide glass reinforcement strands that achieve both favorable mechanical properties (consistent with that of R-glass) and favorable fiberizing properties, such as a reduced Vmax and increased ΔT (similar to that of E glass). Neely does not disclose or suggest a Appeal 2020-002597 Application 15/055,893 5 glass composition capable of forming glass reinforcement strands that achieve both types of properties simultaneously. (Appeal Br. 15). As in the prior appeal, the Examiner found that Neely describes glass reinforcement fibers (strands) formed from a composition comprising the constituents in the limits defined the subject matter of independent claims. (Ans. 5; Neely, Table VI). Similar to the prior appeal, the Examiner found that Neely’s glass fibers are compositionally the same as the claimed invention and, therefore, determined that the argued distinguishing properties are inherent to Neely’s glass fibers.2 (Ans. 4–8). Appellant further argues the claimed invention requires CaO/MgO ratio of ≥1.3 and ≤2, an Li2O concentration of 0.1– 0.8% and an Al2O3+MgO+Li2O content greater than or equal to 23% not disclosed by Neely.3 (Appeal Br. 15–16). The issue regarding the CaO/MgO ratio, Li2O concentration, and Al2O3+MgO+Li2O content in the amounts required by the claimed invention was specifically addressed in the prior appeal and were found to be unavailing. Appellant argues the evidence provided in the three Declarations (September 27, 2016, July 12, 2917, and July 17, 2018) is sufficient to provide evidence of criticality of the claimed ranges and particular selection and combination of elements that achieve unexpected results. (Appeal Br. 16–23). 2 Like the prior appeal, independent claim 36 requires the composition to have an Al2O3+MgO+Li2O content greater than or equal to 23%. 3 Claim 36 does not include the lower limit of ≥1.3 for the CaO/MgO ratio. Appeal 2020-002597 Application 15/055,893 6 Appellant’s evidence is not persuasive of unexpected results. A party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d at 1469– 70. Appellant’s arguments to that effect cannot take the place of evidence. Id. at 1471; In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further, the burden of proving the results are unexpected requires Appellant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Appellants also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Appellant’s representative alleges the data presented in the various declarations establishes the claimed invention achieves unexpected results. (Appeal Br. 16–22). However, the declarations fail to support Appellant’s position. The evidence presented in the present record does not indicate the differences in the results of the embodiments representing the claimed invention and that of Neely (the cited prior art) are unexpected. The declarant in each of the declarations, Michelle Korwin-Edson, does not discuss or explain the data in the declaration and why the declarant believes Appeal 2020-002597 Application 15/055,893 7 that this data indicates the examples representative of the present invention provide results that would have been unexpected by one of ordinary skill in the art. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). It is well settled that where patentability is predicated upon a change in a condition of a prior art composition, such as a change in size, concentration or the like, the burden is on the applicant to establish with objective evidence that the change in critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Also, it is not clear from the showings relied upon in the declarations whether the asserted unexpected results are due to the CaO/MgO ratio, Li2O concentration, and Al2O3+MgO+Li2O content as alleged by Appellant’s representative. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected expected property.”). A showing of unexpected results must be based upon evidence rather than argument or speculation. In re Mayne, 104 F.3d 1339, 1343–44 (Fed. Cir. 1997). On the record before us, we are not persuaded of reversible error in the Examiner’s obviousness rejection. Claims 60–61 Appellant argues the exemplified embodiments of Neely failed to establish the crystalline growth rate in the diopside crystallization phase as required by claims 60 and 61. (Appeal Br. 23–24). The Specification discloses the CaO/MgO ratio between 1.3 and 2 an essential factor for controlling devitrification and promotes diopside crystallization. (Spec. 5, ll. 16–22). As set forth above, Neely Table IV suggests glass compositions containing the components in amounts required by the claimed invention. As such, a person of ordinary skill in the art Appeal 2020-002597 Application 15/055,893 8 following the teachings of Neely would have been motivated to formulate glass compositions having a CaO/MgO ratio below 2 and would have been practicing the claimed invention. Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999) (“Where, as here, the result is a necessary consequence of what was deliberately intended, it is of no import that the article’s authors did not appreciate the results.”) Rejection III Claims 46 and 47 are rejected under 35 U.S.C. § 103(a) as unpatentable over Neely in view of Meng. The Examiner added the teachings of Meng to Neely to reject the subject matter of claims 46 and 47. In response to this rejection Appellant argues Meng fails to remedy the deficiencies of Neely. (Appeal Br. 24). The Examiner has presented factual determinations regarding the suitability of combining the teachings of Neely and Meng. The Examiner’s determinations seem reasonable and are based upon the evidence of record. Since Appellant has failed to specifically challenge the factual determinations, we presume that they are in agreement with the Examiner. Thus, for the reasons presented regarding the independent claim 36 and the reasons presented by the Examiner we will uphold the rejection. Accordingly, we affirm the Examiner’s decision to reject claims 36– 61 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and given above. CONCLUSION The Examiner’s decision to reject claims 36–61 is AFFIRMED. Appeal 2020-002597 Application 15/055,893 9 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 36–61 Nonstatutory Double Patenting 36–61 36–45, 48–61 103(a) Neely 36–45, 48–61 46, 47 103(a) Neely, Meng 46, 47 Overall Outcome 36–61 RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED