Ex Parte Daga et al

Patent Trial and Appeal Board

Dec 6, 2018

14047612 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/047,612 10/07/2013
52674 7590 12/10/2018
Baker & Hostetler LLP
1170 Peachtree Street NE
Suite 2400
Atlanta, GA 30309-7676
FIRST NAMED INVENTOR
Vikram K. Daga
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
ATTORNEY DOCKET NO.
092474.022540
(12PLAS0273
CONFIRMATION NO.
4933
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
12/10/2018 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIKRAM K. DAGA and AMIT S. KULKARNI
Appeal2018-001776
Application 14/047,612
Technology Center 1700
Before ROMULO H. DELMENDO, JENNIFER R. GUPTA, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-001776
Application 14/047,612
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of
claims 1---6, 10-13, 17, 20-23, and 28-32. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a flame retardant thermoplastic
compositions said to exhibit certain improvements in impact properties and
deflection temperature. Spec. ,r 1. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A blended thermoplastic composition comprising:
a) from about 60 wt% to about 90 wt% of a
polycarbonate component comprising at least one bisphenol A
polycarbonate and at least one polycarbonate-polysiloxane
copolymer, wherein said polycarbonate-polysiloxane
copolymer is present in an amount of about 5 wt% to about
20 wt%;
b) an impact modifier component comprising at least one
of a methyl methacrylate-butadiene-styrene (MBS) polymer
component or a methyl methacrylate-butadiene (MB) polymer
component;
wherein the total amount of impact modifier component
in said blended thermoplastic composition, other than the
polycarbonate-polysiloxane copolymer, is from greater than 0
wt% to about 10 wt%; and
1 The real party in interest, which is also listed as Applicant (Application
Data Sheet filed January 14, 2015 at 4), is identified as SABIC Global
Technologies, B.V. Appeal Brief of December 16, 2016 ("App. Br."), 1.
2 Final Office Action of July 14, 2016 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of October 6, 2017 ("Ans."). No Reply
Brief was filed.
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Application 14/047,612
c) from about 5 wt% to about 15 wt% of a flame
retardant component comprising an oligomeric phosphate ester,
wherein the oligomeric phosphate ester is a free flowing
powder at 23 °C;
wherein a molded sample comprising the composition
has a notched Izod impact strength of at least 250 J/m in
accordance with ASTM D256 at about -30 °C;
wherein the combined weight percent value of all
components does not exceed 100 wt%; and
wherein all weight percent values are based on the total
weight of the composition.
Claims Appendix (App. Br. 9).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
An
Moy
US 2008/0004397 Al
WO 2008/027536 Al
REJECTI0NS 3
Jan.3,2008
Mar. 6 2008
Claims 1---6, 10-13, 17, 20-23, and 28-32 are rejected under 35
U.S.C. § 103 as being unpatentable over An and Moy. Final Act. 3.
3 The Examiner rejects claim 22 under 35 U.S.C. § 112( d) or pre-AIA
35 U.S.C. § 112, 4th paragraph. Final Act. 2. Appellant does not appeal this
rejection of claim 22 (see App. Br. 4) and it is summarily affirmed.
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Appeal2018-001776
Application 14/047,612
OPINION
Appellant argues that the Examiner reversibly erred in rejecting
claim 1 4 because the Examiner engaged in impermissible hindsight in
finding that the combined prior art teaches a composition having "from
about 60 wt% to about 90 wt% of a polycarbonate ... , wherein said
polycarbonate-polysiloxane copolymer is present in an amount of about
5 wt% to about 20 wt%" as recited in claim 1. App. Br. 5. Appellant raises
various arguments including that prior art Example 7 of An does not disclose
a composition with overlapping ranges of polycarbonate and polycarbonate-
polysiloxane copolymer. Id. at 5---6.
Appellant, however, does not dispute that An describes a
thermoplastic composition having "100 parts by weight of polycarbonate" as
well as "from about 0.3 parts to about 7.0 parts by weight of a polysiloxane-
polycarbonate copolymer." An. ,r 84 (cited in Final Act. 7); see App. Br. 4--
6. Appellant does not address and certainly does not identify reversible error
in the Examiner's calculation that there is about 6 wt% of polycarbonate-
polysiloxane copolymer in the prior art thermoplastic composition based on
that undisputed prior art teaching. Compare App. Br. 4---6, with Final
Act. 7-8 (finding that the calculated weight percentage overlaps with the
recited "about 5 wt% to about 20 wt%"); see also Ans. 8, 15. Appellant also
does not address the Examiner's calculation that the weight percentage of
the prior art polycarbonate overlaps with that recited in claim 1. Compare
App. Br. 4---6, with Final Act. 8 (finding that the calculated weight
4 Appellant does not present argument separate for claims 2---6, 10-13, 17,
20-23, and 28-32. App. Br. 3-8. These claims stand or fall with claim 1 for
the obviousness rejection. Id.; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Appeal2018-001776
Application 14/047,612
percentage overlaps with the recited "from about 60 wt% to about 90 wt% of
a polycarbonate"); see also Ans. 8, 15. Because Appellant does not address
the rationale supporting the Examiner obviousness analysis, we are not
persuaded that the Examiner reversibly erred here. In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) ("A prima facie case of obviousness typically
exists when the ranges of a claimed [invention] overlap the ranges disclosed
in the prior art.").
Appellant next argues that the Examiner reversibly erred in finding
that the recited "oligomeric phosphate ester" is taught in the prior art. App.
Br. 6. Without disputing the Examiner's finding that Moy teaches this
component as part of a polycarbonate composition ( compare id., with Final
Act. 6), Appellant disagrees that there is a reason to combine the prior art
teachings. App. Br. 6, 7. As the Examiner points out, Appellant's argument
is solely directed to whether a skilled artisan would substitute the KSS
(potassium diphenylsulfone sulfonate flame retardant) in one particular
example of An with the oligomeric phosphorous flame retardant taught in
Moy without addressing the teaching of An in its entirety. Ans. 18. For
example, Appellant does not address the Examiner's finding that An
describes various oligomeric organophosphate including a version of the
flame retardant taught in An. Compare App. Br. 6-7, with Final Act. 14; see
also Ans. 18 ( citing various portions of An including ,r 100). Because
Appellant's argument does not address the teachings of the prior art taken as
a whole which is the basis of the obviousness determination, no reversible
error has been identified here. See In re Gorman, 933 F.2d 982, 986 (Fed.
Cir. 1991) (holding that obviousness is analyzed based on "whether the
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teachings of the prior art, taken as a whole, would have made obvious the
claimed invention").
Appellant lastly argues that the Examiner reversibly erred in
evaluating declaratory evidence submitted by Dr. Vikram Kumar Daga.
App. Br. 7. "To be particularly probative, evidence of unexpected results
must establish that there is a difference between the results obtained and
those of the closest prior art, and that the difference would not have been
expected by one of ordinary skill in the art at the time of the invention."
Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977
(Fed. Cir. 2014). Appellant faults the Examiner for finding that Example 7
of An is the closest prior art but do not explain why the compositions shown
in Dr. Daga' s declaration are the closest prior art. App. Br. 7. Moreover,
while Appellant does not dispute the Examiner's finding that the recited
composition is broader in scope than what was tested in the declaration,
Appellant asserts that unexpected results are nonetheless shown for the
recited composition because the Inventors are "not claiming any and all
combinations of the recited elements, but only those having the claimed
properties." Id. Although claim 1 limits the composition to those that
possess "a notched Izod impact strength of at least 250 J/m in accordance
with ASTM D256 at about -30 °C,"5 the results shown for the inventive
example in the declaration (550 J/m) is not reasonably close to 250 Jim.
Moreover, "by definition, any superior property must be unexpected
to be considered evidence of non-obviousness. Thus, in order to properly
5 In re Stepan Co., 868 F.3d 1342, 1348 (Fed. Cir. 2017) ("The cloud point
thus limits and defines the scope of what surfactant combinations satisfy the
claimed composition.").
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Application 14/047,612
evaluate whether a superior property was unexpected, the [fact-finder]
should have considered what properties were expected. Here, Pfizer's
evidence must fail because the record is devoid of any evidence of what the
skilled artisan would have expected." Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1371 (Fed. Cir. 2007). In this case, the record similarly lacks such a
showing of what a skilled artisan would have expected as well as whether
the improvement, if any, would have been unexpected. We are therefore not
persuaded that the Examiner reversibly erred in evaluating the declaratory
evidence.
DECISION
The Examiner's decision is affirmed.
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)(l )(iv).
AFFIRMED
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