Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE DAVID S. CORDOVA, DAVID R. COFFIN, STANLEY D. LAZARUS AND STEVEN
Appeal No. 87-0298
December 4, 1987
Application for Patent filed July 18, 1984, Serial No. 631,978. Fiber for Reinforcing Plastic Composites and Reinforced Plastic Composites Therefrom.
William H. Thrower et al. for appellants
Primary Examiner--Paul J. Thibodeau
This is an appeal from the final rejection of claims 1 through 4 and 7 through 20. Claims 21 through 31, the only other claims remaining in the application, stand withdrawn pursuant to the provisions of 37 CFR 1.142(b).
The subject matter on appeal is directed to a polyester or a polyamide fiber coated with an alkyd resin.
Claim 1 is illustrative and reads as follows:
1. A high tenacity reinforcing fiber selected from the group consisting of polyester, aliphatic polyamide, and combinations thereof, for reinforcing plastic composites, said fiber being coated with a composition comprising an aqueous solution of carboxyl-terminated, oil-free alkyd resin which is the reaction product of at least one aliphatic glycol containing 2 to 12 carbons with a combination of aromatic di- or trifunctional carboxylic acids and, optionally, an unsaturated aliphatic carboxylic acid, said resin having a degree of esterification below the gel point of the resin to enhance stiffness of the fiber for cutting.
The reference relied upon by the examiner is:
Login 4,156,073 May 22, 1979
Claims 1, 3, 7, 8, 11, 12 and 15 through 18 stand rejected under the second paragraph of 35 U.S.C. 112 as indefinite. The examiner contends that the use of the term "optionally" is ambiguous, since it is not clear whether the unsaturated aliphatic carboxylic acid is, in fact, encompassed by the claims. The recitation "optionally" denotes that the unsaturated aliphatic carboxylic acid may or may not be employed. It is not apparent, and the examiner has not explained, why the use of such alternative language fails to particularly point out and distinctly claim the subject matter appellants regard as their invention. It is our opinion that the use of the alternative expression "optionally" in the rejected claims does not obfuscate the subject matter appellants regard as their invention. Ex parte Head, 214 USPQ 551 (Bd.App.1981). The examiner's rejection under the second paragraph of 35 U.S.C. 112 is, therefore, reversed.
All of the appealed claims stand rejected under 35 U.S.C. 103 as unpatentable over Login. This rejection is affirmed.
Login discloses polyester fibers, such as polyethylene terephthalate fibers, having applied thereto an alkyd resin which is the reaction product of components embraced by the appealed claims. We note the various polycarboxylic acids and glycols disclosed by Login correspond to those contemplated by appellants and encompassed by several of the dependent claims. We particularly note that the claims are of sufficient scope to embrace the aromatic carboxylic acid component of Login which contains a -SO@3M grouping.
*2 Since Login contemplates the use of
"many types of synthetic fibers" (column 6, line 54),
it would appear reasonable to conclude that Login embraces or would have suggested fibers satisfying the requirements of various dependent claims such as claims 16 through 20. Furthermore, it would appear reasonable to conclude that the amount of solids pickup satisfies the requirements of dependent claims 7 through 18. The Patent and Trademark Office does not have the requisite facilities to conduct laboratory testing to ascertain the degree of solids pickup in Login's process. However, since the disclosed process is similar to that claimed, and since the function performed by Login's alkyd resin is similar to that of the appealed claims, i.e., increasing adhesion between the filaments [FN1], it would appear reasonable to conclude that the amount of solids pickup in Login's process satisfies the requirements of the above-noted claims. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed.Cir.1986).
We recognize that under certain circumstances a preambular recitation indicating intended use may impose sufficient structural limitations upon a claimed article to differentiate it over a prior art article. See, for example, Kropa v. Robie, 187 F.2d 150, 88 USPQ 478 (CCPA 1951). In the situation before us, the preambular recitations argued by appellants are "reinforcing fiber" and "for reinforcing plastic composites." The issue which arises is not whether one having ordinary skill in the art would have found it prima facie obvious to employ Login's coated fibers to reinforce plastic composites. Rather, the issue which arises is whether the coated fibers disclosed by Login would be capable of performing a reinforcing function if embedded in plastic material. Since Login apparently contemplates a wide variety of fibers and the coating composition corresponds to that employed by appellants, a factual basis exists upon which to reasonably conclude that Login's coated polyester fibers are capable of reinforcing some plastic material.
Appellants, on page 5 of the principal Brief, argues that
"the presence of the -SO@3M group required in Login may or may not have adverse effects on the fiber claimed by appellants. It cannot be known without testing the Login finish.... It is speculated that the presence of such a group would have adverse effects and would therefore be outside the scope of the claims. (Emphasis supplied.)
In our opinion, the appealed claims are of sufficient scope to encompass Login's alkyd resin which is produced by reacting, inter alia, an aromatic carboxylic acid containing a -SO@3M grouping. Appellants' speculations do not persuade us otherwise.
Based upon the foregoing, we agree with the examiner's conclusion that one having ordinary skill in the art would have found the claimed invention prima facie obvious. As evidence of nonobviousness, appellants refer to the data which appear in Table 1 on page 10 of the specification to demonstrate that a certain type of textile fiber cannot be employed for effective reinforcement of a particular plastic. We have considered this evidence; however, we do not find it persuasive of nonobviousness.
*3 The data suggest that polyethylene terephthalate fibers conventionally employed in the production of textiles are not as suitable for reinforcing certain plastics as other types of polyethylene terephthalate fibers. However, the appealed claims are drawn to coated fibers which are generally capable of reinforcing unspecified plastic composites. Cf. In re Muchmore, 433 F.2d 824, 167 USPQ 681 (CCPA 1970). The evidence does not suggest that the coated fibers disclosed by Login are incapable of reinforcing some plastic material. Cf. In re Johnson, 747 F.2d 1456, 223 USPQ 1260 (Fed.Cir.1984); In re De Blauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir.1984); In re Fenn, 639 F.2d 762, 208 USPQ 470 (CCPA 1981).
Upon consideration anew of the evidence of obviousness relied upon by the examiner and weighing such evidence of obviousness against the evidence of nonobviousness relied upon by appellants [FN2], it is our judgment that the evidence of obviousness outweighs the evidence of nonobviousness. We, therefore, agree with the examiner's conclusion that one having ordinary skill in the art would have found the claimed invention as a whole obvious within the meaning of 35 U.S.C. 103.
Saul I. Serota
Arthur J. Steiner
William A. Skinner
FN1. Appellants' specification reveals that the alkyd resin enhances interfilament coherency. See, for example, page 1, lines 9 through 14.
FN2. In re Johnson, supra.