Ex Parte Guo et al

Patent Trial and Appeal Board

Jan 24, 2019

14023320 (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/023,320 09/10/2013
52674 7590
Baker & Hostetler LLP
1170 Peachtree Street NE
Suite 2400
Atlanta, GA 30309-7676
01/28/2019
FIRST NAMED INVENTOR
Mingcheng Guo
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.
092474.023000
(13PLAS0087
CONFIRMATION NO.
1077
EXAMINER
RIETH, STEPHEN EDWARD
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINGCHENG GUO, Y AQIN ZHANG,
and YUN ZHENG
Appeal2017-004773
Application 14/023,320
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (SABIC Global Technologies B.V.) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-7, 9-17, 19,
22, 24--26, 28-36, 38--40, and 48. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The claims are to a blended thermoplastic composition and an article
comprising the composition. Claim 1 is illustrative:
1. A blended thermoplastic composition comprising:
a. one or more first polycarbonate components, wherein
the total amount of the first polycarbonate components in the
thermoplastic composition is from about 35 wt% to 50 wt%
of [sic];
Appeal2017-004773
Application 14/023,320
b. one or more second polycarbonate components that
are branched chain polycarbonate polymers, wherein the total
amount of the second polycarbonate components in the
thermoplastic compositions is from about 10 wt% to about
15 wt%;
c. from about 10 wt% to about 15 wt% of at least one
polycarbonate-polysiloxane copolymer component; and
d. from about 5 wt% to about 30 wt% of titanium
dioxide;
wherein the combined weight percent value of all
components does not exceed about 100 wt%;
wherein all weight percent values are based on the total
weight of the composition;
wherein a molded sample of the blended thermoplastic
composition has a through-plane thermal conductivity when
determined in accordance with ASTM EI461 of greater than or
equal to about 0.4 W/mK; and
wherein a molded sample of the blended thermoplastic
composition has an in-plane thermal conductivity when
determined in accordance with ASTM EI461 of greater than or
equal to about 1.0 W/mK.
DeRudder
Li
Akasawa ( as translated)
Hoover
van derMee
The References
US 2007/0135569 Al
US 2008/0081860 Al
JP 51-37149 A
EP O 524 731 Al
WO 2012/114309 Al
The Re} ections
June 14, 2007
Apr. 3, 2008
Mar. 29, 1976
Jan.27, 1993
Aug.30,2012
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
claims 1-7, 9, 11-17, 19, 22, 24--26, 29-36, 38--40,
and 48 over 1) DeRudder, 2) DeRudder in view of van der Mee,
3) DeRudder in view of Hoover, and 4) DeRudder in view of
van der Mee and Hoover;
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Application 14/023,320
claim 10 over 1) DeRudder in view of Li, 2) DeRudder in view
of van der Mee and Li, 3) DeRudder in view of Hoover and Li, and
4) DeRudder in view of van der Mee, Hoover, and Li; and
claim 28 over 1) DeRudder in view of Akasawa, 2) DeRudder
in view of van der Mee and Akasawa, 3) DeRudder in view of Hoover
and Akasawa, and 4) DeRudder in view of van der Mee, Hoover, and
Akasawa.
OPINION
We affirm the rejections.
The Appellant argues the claims as a group (App. Br. 3-15). We
therefore limit our discussion to one claim, i.e., claim 1. Claims 2-7, 9-17,
19, 22, 24--26, 28-36, 38--40, and 48 stand or fall with that claim. See
37 C.F.R. § 4I.37(c)(l)(iv) (2012).
DeRudder discloses in Example 16 a blended thermoplastic
composition comprising 39.38 wt% co-polycarbonate (Co-poly 2) (which
corresponds to the Appellant's first polycarbonate component), 13.12 wt%
branched polycarbonate (PC-2) (which corresponds to the Appellant's
second polycarbonate component), and 10 wt% polydimethylsiloxane-
bisphenol A polycarbonate copolymer (which corresponds to the Appellant's
polycarbonate-polysiloxane copolymer component), and a stabilizing
package containing 1.59 phr Ti02 (i1i1123 (Table 1), 143 (Table 2), 144).
The composition can contain a filler or reinforcing agent which can be Ti02
in an amount of about O to about 100 parts by weight per 100 parts by
weight of total polymer (i.e., about Oto about 50 wt%) (i1i193, 94).
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Application 14/023,320
The Appellant asserts that claim 1 requires "that the total amount of
the one or more branched chain polycarbonate polymers is about 1 Owt% to
about 15 wt%" (App. Br. 4).
Claim 1 requires that the total amount of the second polycarbonate
components, not the total amount of branched chain polycarbonate
polymers, is about 10 wt% to about 15 wt%. The claim's "comprising"
transition term opens the claim to a third polycarbonate which is a branched
chain polycarbonate polymer such as branched polycarbonate PC- I in
DeRudder's Example 16. See In re Baxter, 656 F.2d 679, 686 (CCPA
19 81 ). Moreover, the claim does not preclude the one or more first
polycarbonate components from being branched chain polycarbonate
polymers.
The Appellant asserts that claim 1 requires "that the total amount of
the one or more first polycarbonate components is about 35 wt% to 50 wt%"
(App. Br. 4), and "DeRudder's Example 16 (which includes two
polycarbonate [components] totaling 52.51 wt.% of that composition) falls
outside the scope of the appealed claims" (Reply Br. 2).
Claim 1 's "comprising" transition term opens the claim to one or
more fourth polycarbonate components such as co-polycarbonate Co-poly 1
in DeRudder's Example 16.
The Appellant asserts that DeRudder's fillers do not include titanium
dioxide (App. Br. 9, n. 10).
DeRudder discloses that suitable fillers or reinforcing agents include
Ti02 (i193) and that the amount of filler or reinforcing agent generally is
about O to about 100 parts by weight per 100 parts by weight of total
polymer (i.e., about Oto about 50 wt%) (i194).
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Application 14/023,320
The Appellant asserts that "DeRudder' s Examples do not characterize
the Ti02 as a filler - it is characterized as a component of a 'stabilization
package"' (Reply Br. 5).
DeRudder is not limited to its examples. See In re Fracalossi, 681
F.2d 792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649,651 (CCPA
1972). Instead, all disclosures therein must be evaluated for what they
would have fairly suggested to one of ordinary skill in the art, see In re Boe,
355 F.2d 961,965 (CCPA 1966). DeRudder discloses that the Ti02 can be a
filler and that the amount of filler can be about O to about 100 parts by
weight per 100 parts by weight of total polymer (i.e., about O to about
50 wt%) (iTiT 93, 94).
The Appellant asserts that "in addition to being referred to as a 'filler
or reinforcing agent,' DeRudder also refers to Ti02 as a light stabilizer
(paragraph [0098]) and a colorant (paragraph [ 100])" (Reply Br. 5).
Those disclosures do not remove the disclosure that Ti02 can be a
filler (iT 93) in the disclosed amount which encompasses the amount required
by the Appellant's claim 1 (iT 94).
The Appellant asserts that comparing the Appellant's Specification's
inventive formulations ( 4 and 11) 1 with formulations ( 1-3 and 7-10) which
lack the Appellant's branched chain polycarbonate polymer and/or
polycarbonate-polysiloxane copolymer shows surprising improvement in
1 The Appellant's statement that formulations 5 and 6 are within claim 1 is
incorrect (App. Br. 10). Those formulations contain 20 wt% branched chain
polycarbonate copolymer which is outside claim 1 's range of about 10 wt%
to about 15 wt%.
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Application 14/023,320
notched and unnotched impact strength, tensile elongation, and thermal
conductivity (App. Br. 10-13; Reply Br. 6).
We have begun anew and determined that for the following reasons
the totality of the evidence supports a conclusion of obviousness of the
Appellant's claimed invention. See In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976).
First, the Appellant's showing of unexpected results does not provide
a comparison of the claimed invention with the closest prior art. See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). DeRudder's Example 16 which
includes the Appellant's first and second polycarbonate components and
polycarbonate-polysiloxane copolymer component is closer to the claimed
composition than the Appellant's comparative examples which lack the
second polycarbonate component and/or the polycarbonate-polysiloxane
copolymer component.
Second, it is not enough for the Appellant to show that the results for
the Appellant's invention and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCP A 1972). The Appellant provides mere attorney argument that
the results would have been unexpected (App. Br. 10-13), and arguments of
counsel cannot take the place of evidence. See Blauwe, 736 F.2d at 705; In
re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d 1185,
1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Third, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983); In re Clemens, 622
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Application 14/023,320
F.2d 1029, 1035 (CCPA 1980). Claim 1 encompasses linear and branched
polycarbonate polymers and polycarbonate-polysiloxane copolymers
generally, and about 35-50 wt% of the one or more first polycarbonate
components, about 10 to about 15 wt% of the one or more second
polycarbonate components, and about 10 to about 15 wt% of the one or
more polycarbonate-polysiloxane components, but the Appellant's inventive
examples ( 4 and 11) include only two amounts of first polycarbonate
component ( 40 and 50 wt%) and one amount (10 wt%) of each of the second
polycarbonate and polycarbonate-polysiloxane components. We find in the
evidence of record no reasonable basis for concluding that the great number
of materials in the amount ranges encompassed by Appellant's claim would
behave as a class in a manner comparable to the particular materials tested.
See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi, 440 F.2d
442, 445--46 (CCPA 1971).
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION
The Examiner's decision rejecting claims 1-7, 9-17, 19, 22, 24--26,
28-36, 38--40, and 48 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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